Taal Distributed Information Technologies Inc. v. Stephen Mollah
Claim Number: FA2208002007105
Complainant is Taal Distributed Information Technologies Inc. (“Complainant”), represented by Conrad Druzeta, Canada. Respondent is Stephen Mollah (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whatsonchain.net>, registered with Google LLC.
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.
The Honorable Neil Anthon y Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2022; the Forum received payment on August 4, 2022.
On August 5, 2022, Google LLC confirmed by e-mail to the Forum that the <whatsonchain.net> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 August 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@whatsonchain.net. Also on August 8, 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 September 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 made the following contentions.
Complainant operates a website through which blockchain search services are provided. Complainant asserts rights in the WHATSONCHAIN mark, having filed an application with the United States Patent and Trademark Office (USPTO) (e.g., Serial No. 97,157,965, filed December 6, 2021). See Compl. Annex 4. Respondent’s <whatsonchain.net> domain name is identical or confusingly similar to Complainant’s WHATSONCHAIN mark as it incorporates the mark in its entirety, only adding the “.net” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the <whatsonchain.net> domain name. Complainant has not authorized or licensed Respondent to use the WHATSONCHAIN mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website is inactive.
Respondent registered and uses the <whatsonchain.net> domain name in bad faith, as the domain name resolves to a website lacking any substantive content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company that operates a website through which blockchain search and related services are provided.
2. Complainant has established its common law trademark rights in the WHATSONCHAIN mark, that it has owned those rights since at least September 2020, supported by evidence that it filed an application with the United States Patent and Trademark Office (USPTO) (e.g., Serial No. 97,157,965, filed December 6, 2021.
3. Respondent registered the <whatsonchain.net> domain name on February 14, 2022.
4. Respondent has caused the domain name to resolve to a website that is inactive.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the mark through its pending application of the WHATSONCHAIN mark with the USPTO (e.g., Serial No. 97,157,965, filed December 6, 2021). See Compl. Annex 4. .”). Here, the Panel notes the trademark application was filed with the USPTO on December 6, 2021. See Compl. Annex 4.
Applications for a trademark are not generally regarded as trademarks to meet the requirement for a complainant to have rights in a trademark. However, Complainant contends it has common law rights in the WHATSONCHAIN mark through its continuous operation of the “whatsonchain.com” domain name for multiple years and its use of that domain name to conduct its business under the name WHATSONCHAIN. The evidence is that Complainant purchased the company previously operating the WhatsOnChain blockchain search business in September 2020. All intellectual property was transferred to the Complainant's Swiss subsidiary which continues to run the business.
Past panels have found that registration of a mark with a trademark agencies is not necessary to establish rights in a mark if the complainant can prove common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Complainant therefore does not have to provide evidence of an approved registration of the mark with a trademark agency to establish rights in the mark.
In that regard, Complainant has demonstrate that the mark has acquired secondary meaning through continuous use and marketing of the mark. Common law rights are established if the mark has acquired secondary meaning, indicating the mark is recognized and associated with its intended use. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant submits that the WHATSONCHAIN mark is associated with the <whatsonchain.com> domain name through its longstanding use. As the Panel agrees, it finds Complainant has established common law rights in the WHATSONCHAIN mark since at least September 2020. The disputed domain name was registered on February 14, 2022.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WHATSONCHAIN mark. Complainant argues Respondent’s <whatsonchain.net> domain name is identical or confusingly similar to Complainant’s WHATSONCHAIN mark as it incorporates the mark in its entirety, only adding the “.net” gTLD. The mere addition of a gTLD does not prevent the disputed domain name from being identical or confusingly similar to a mark. See Verragio, LTD. v. Lance Liao, FA 1445159 (Forum July 5, 2012) (“Respondent’s <verragio.net> domain name is identical to Complainant’s VERRAGIO mark, since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”). The Panel therefore finds the <whatsonchain.net> domain name is identical to Complainant’s WHATSONCHAIN mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s WHATSONCHAIN trademark and to use it in its entirety in its domain name;
(b) Respondent registered the <whatsonchain.net> domain name on February 14, 2022;
(c) Respondent has caused the domain name to resolve to a website that is inactive.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <whatsonchain.net> domain name because Respondent is not authorized to use the WHATSONCHAIN mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Stephen Mollah” and there is no evidence to suggest Complainant authorized Respondent to use the WHATSONCHAIN mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Although not specifically argued, the Panel notes the <whatsonchain.net> domain name is not used for a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) as the resolving website is inactive. Using a domain name only to redirect users to an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use for purposes of Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the resolving website, showing an error message when trying to reach the disputed domain name. See Compl. Annex 1. Therefore, the Panel finds Respondent is not using the <whatsonchain.net> domain name in compliance with Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent registered and uses the <whatsonchain.net> domain name in bad faith per Policy ¶ 4(a)(iii) . The Panel may look beyond Policy ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Complainant contends Respondent registered and uses the <whatsonchain.net> domain name in bad faith as the resolving website lacks any substantive content. Previously, panels have found that holding a domain name only to redirect users to an inactive website is indicative of bad faith 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.”). The Panel note screenshots of the resolving website, showing the website lacks any substantive content. See Compl. Annex 1. As the Panel agrees, it finds Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WHATSONCHAIN mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whatsonchain.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: September 6, 2022
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