Coinbase, Inc. v. gary gay
Claim Number: FA2202001983825
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is gary gay (“Respondent”), Bosnia and Herzegovina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coins-base.net>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2022; the Forum received payment on February 9, 2022.
On February 10, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <coins-base.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coins-base.net. Also on February 10, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a leading provider of end-to-end financial infrastructure and technology for the crypto-economy.
Complainant has rights in the COINBASE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <coins-base.net> domain name is confusingly similar to Complainant’s COINBASE mark. Respondent incorporates Complainant’s mark in its entirety, adding the letter “S” and a hyphen along with the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <coins-base.net> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the COINBASE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent currently fails to make an active use of the domain name.
Respondent registered and used the <coins-base.net> domain name in bad faith as Respondent attempts to confuse internet users by making use of Complainant’s COINBASE mark. At one time Respondent used the at-issue domain name in connection with a phishing scheme. Respondent now fails to make an active use of the domain name. Respondent engages in the practice of typosquatting. Respondent had actual knowledge of Complainant’s rights in the COINBASE mark due to the longstanding use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in COINBASE.
Respondent registered the at-issue domain name after Complainant acquired rights in COINBASE.
Complainant’s has not authorized Respondent to use Complainant’s trademark.
Respondent holds the at-issue domain name passively.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for its COINBASE trademark demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <coins-base.net> domain name contains an intentional misspelling of Complainant’s COINBASE trademark with an “s” and hyphen inserted between the mark’s terms and with all followed by the top-level domain name, “.net.” The differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <coins-base.net> domain name is confusingly similar to Complainant’s COINBASE trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Zhichao Yang, FA 1780211 (Forum May 3, 2018) (“Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is added to the marks in forming the domain name. Further, there is no doubt that Respondent picked the at-issue domain names precisely because they are easily confused with Complainant trademarks and Complainant’s trademarked <clips4sale.com> website.”); see also, LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”); see also LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name indicates “gary gay” as the domain name’s registrant and there is no evidence before the Panel that otherwise indicates Respondent is commonly known by the <coins-base.net> domain name or by COINBASE. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Browsing to <coins-base.net> returns a webpage indicating that no site can be found. Respondent’s passive holding of the at-issue domain name shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in the <coins-base.net> domain name.
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First as mentioned above regarding rights and legitimate interests, Respondent currently fails to make active use of the domain name as the domain name returns an error message. Respondent’s passive holding of the domain name shows Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also, VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Second, the <coins-base.net> website was at one time used in what appears to have been a phishing scheme. Respondent’s website displayed a fake announcement promising cryptocurrency giveaways in exchange for advance payments. The website offered users who sent a payment of .01 to 1 Bitcoin to Respondent’s address would receive 1 to 10 BTC in return. Using the at-issue domain name to exploit confusion between the at-issue domain name and Complainant’s trademark as part of a phishing scheme further indicates Respondent’s bad faith under Policy ¶ 4(b)(iv) and otherwise. See, Coinbase v. Anonymize (Forum FA2108001958522) (holding respondent’s use of the at-issue domain names for fraudulent activities, namely, phishing, constitutes bad faith because “[t]he potential for theft and other mischief is obvious).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the malformed string in a domain name hoping that internet users will accidently type such string when searching for products or services associated related to the target trademark and/or hopes that some internet users will misread the misspelled trademark laden domain name and confuse it with its target trademark. Although Complainant’s COINBASE trademark is misspelled in the at-issue domain name the COINBASE trademark is nevertheless recognizable when reading Respondent’s <coins-base.net> domain name. Notably, Respondent’s intentional misspelling of COINBASE within Respondent’s <coins-base.net> domain name is indicative of Respondent’s desire to use the domain name to inappropriately exploit Complainant’s COINBASE mark. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
Moreover, Respondent had actual knowledge of Complainant’s rights in COINBASE mark when it registered <coins-base.net> as a domain name. Respondent’s prior knowledge of Complainant’s trademark is evident because of the mark’s notoriety and because of the domain name’s use in a cryptocurrency related phishing scheme. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Forum July 31, 2002) (“It is evident that Respondent knew of Complainant’s rights in the CELEBREX mark since Complainant coined [the term “Celebrex”] and Respondent uses the mark in conjunction with marks of Complainant’s competitors.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coins-base.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 8, 2022
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