Bloq, Inc. v. eric dender
Claim Number: FA1901001827268
Complainant is Bloq, Inc. (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is eric dender (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitcoinbloq.com>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on January 28, 2019.
On January 29, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitcoinbloq.com> 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 January 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2019 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@bitcoinbloq.com. Also on January 31, 2019, 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 February 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 is a global leader in the area of blockchain and distributed ledger technologies, and the company creates platforms and tools that enable the building of blockchain supported and decentralized businesses, applications, and collectives relating, in part, to the trading and management of virtual currencies such as bitcoin and others. Complainant has rights in the BLOQ trademark based on its registration with multiple government authorities, including China’s State Administration for Industry and Commerce (“SAIC”), the European Intellectual Property Office (“EUIPO”), and the Russian Trademark Office (“RTO”). The earliest of these registrations dates to May of 2016. Respondent’s <bitcoinbloq.com> domain name, registered on November 25, 2018, is confusingly similar to Complainant’s BLOQ mark, as it incorporates the mark and merely adds the generic/descriptive term “bitcoin” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitcoinbloq.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BLOQ mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert internet users to a web page that hosts pay-per-click links to third-party websites and that may also be distributing malware.
Respondent registered and is using the <bitcoinbloq.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent uses the disputed domain name to host pay-per-click links to third-party websites and possibly for distributing malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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.”).
Complainant claims rights in the BLOQ trademark based on registration with multiple government authorities, including the SAIC, the EUIPO, and the RTO. Registration of a mark with several government authorities is sufficient to establish rights in that mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). The Panel therefore holds that Complainant’s registration of the BLOQ trademark with multiple government authorities is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bitcoinbloq.com> domain name is confusingly similar to the BLOQ mark, as it incorporates the mark and merely adds the generic/descriptive term “bitcoin” and the “.com” gTLD. Addition of generic terms and/or a gTLD is not sufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); Citadel LLC, et. al. v. Jordan Rivers / Jordan Industries ltd / Webber Dennis Richard / Webber Trading PLC, FA1712001764048 (Forum Jan. 31, 2018) (finding the term “bitcoin” generic, and holding “Complainant asserts Respondent’s <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark before appending the generic financial terms ‘bitcoin’… The Panel agrees with Complainant and find Respondent’s disputed domain names are confusingly similar to Complainant’s CITADEL mark per Policy ¶ 4(a)(i).”) Here, Respondent added the term “bitcoin” and the gTLD “.com” to Complainant’s BLOQ mark when registering the <bitcoinbloq.com> domain name. The Panel finds that the disputed domain name is confusingly similar to Complainant’s BLOQ mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 has no rights or legitimate interests in the <bitcoinbloq.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BLOQ mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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 of record identifies the owner of the <bitcoinbloq.com> domain name as “eric dender” and no information in evidence here indicates that Respondent is known otherwise or that it was authorized to register a domain name with Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <bitcoinbloq.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <bitcoinbloq.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to divert internet users to a web page that hosts pay-per-click links to third-party websites, some of which are competitive in the field of virtual currencies. Use of a domain name to host pay-per-click links that divert users from a complainant’s business is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant has provided screenshots of the web page associated with the <bitcoinbloq.com> domain name to support this contention and the site does, in fact, contain links to various goods or services that are not associated with the Complainant. Further, Complainant submits a screenshot indicating that the <bitcoinbloq.com> website has, in some instances, been blocked by security software due to its possible distribution of malware. Such use may also evince a lack of rights and legitimate interests in a domain under Policy ¶ 4(a)(ii). See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)).
Finally, although the Complainant’s BLOQ mark appears to be an intentional variation on the word “block” (as in “blockchain”), in the absence of any response or other submission from the Respondent, there is no evidence of record to indicate that the terms making up the <bitcoinbloq.com> domain name are being used in any descriptive, generic, or other fair manner that does not specifically target Complainant’s BLOQ mark.
For all of the foregoing reasons, the Panel determines that Respondent does not have rights or legitimate interests in the <bitcoinbloq.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s bad faith is indicated by its use of the <bitcoinbloq.com> domain name to host pay-per-click links to third-party websites, some of which are competitors in the virtual currency space. Use of a domain name to host links to third-party websites may demonstrate bad faith under Policy ¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”) Complainant provides screenshots of the web page associated with the disputed domain name to support this contention, which does display various links to third-party websites. The Panel’s independent review of additional pages on the <bitcoinbloq.com> website provides further support for the contention that the links appearing there do, in fact, lead to various virtual currency services. Furthermore, use of a disputed domain for such purposes as the distribution of malware may evince bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Accordingly, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitcoinbloq.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 26, 2019
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