Colin LeMahieu v. NANO DARK
Claim Number: FA1805001786065
Complainant is Colin LeMahieu (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is NANO DARK (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nanodark.com>, registered with Network Solutions, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2018; the Forum received payment on May 10, 2018.
On May 11, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <nanodark.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2018 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@nanodark.com. Also on May 14, 2018, 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 June 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <nanodark.com> domain name is confusingly similar to Complainant’s NANO mark.
2. Respondent does not have any rights or legitimate interests in the <nanodark.com> domain name.
3. Respondent registered and uses the <nanodark.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Colin LeMahieu, is the founder of the NANO digital currency. Complainant owns a registration for the NANO mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003275038, registered Mar. 9, 2018), and with the World Intellectual Property Organization (“WIPO”) (Reg. No. 1,401,527 registered Jan. 4, 2018).
Respondent registered the <nanodark.com> domain name on April 24, 2018, and uses it to pass itself off as Complainant and divert Internet users to a website offering competing digital currency.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has demonstrated rights in the NANO mark under Policy ¶ 4(a)(i) through its registration with UKIPO and WIPO. See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”); see also Vapiano AG v. Sex-Escort, FA 829126 (Forum Dec. 13, 2006) (“Complainant has registered the VAPIANO mark…with the Madrid Protocol for the International Registration of Marks. These trademark registrations sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”)
Respondent’s <nanodark.com> domain name incorporates Complainant’s NANO mark, and adds the generic term “dark,” and a gTLD. These changes do not distinguish the domain name from the mark in an analysis for confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Respondent’s <nanodark.com> domain name is confusingly similar to Complainant’s NANO mark.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <nanodark.com> domain name and is not commonly known by the disputed domain name. Complainant did not authorize Respondent’s use of the NANO mark. Although the WHOIS information of record names “NANO DARK / NANO DARK” as the registrant of the disputed domain name, there is no evidence in the record that Respondent is actually known by that name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent does not use the <nanodark.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Use of a domain name to offer goods or services in direct competition with a complainant, and to pass itself off as a complainant, is not a bona fide offering of goods or services, or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent uses the disputed domain name to offer and promote a competing digital currency called “nano dark” and to appear to be Complainant or related to Complainant. Consequently, the Panel finds that Respondent does not make a bona fide offering of goods or services, or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain name to disrupt Complainant’s business through the offer of competing products. Complainant provides screenshot evidence of the resolving website for the <nanodark.com> domain name, which offers “NANO DARK” cryptocurrency in competition with Complainant’s “NANO” cryptocurrency. The Panel finds that Respondent’s competing use of the disputed domain name is in bad faith under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant provides evidence that Respondent registered and uses the <nanodark.com> domain name to pass itself off as Complainant and divert Internet users to Respondent’s website offering a competing digital currency. The Panel finds that this use constitutes bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant also asserts that Respondent had actual knowledge of Complainant’s rights in the NANO mark prior to registering the <nanodark.com> domain name. Respondent uses the disputed domain name to offer a competing, and confusingly similar, digital currency in an attempt to profit from the Complainant’s goodwill in the NANO mark. Further, Respondent uses a nearly identical logo of Complainant’s on the resolving website, and Respondent describes digital currency in a very similar fashion as Complainant. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name, bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nanodark.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 9, 2018
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