Coinbase, Inc. v. Joao Golao / asd / Geraldo Macedo / Suspended Domain / Valdir Penha
Claim Number: FA2108001959817
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Joao Golao / asd / Geraldo Macedo / Suspended Domain / Valdir Penha (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co>, and <oinbase.co> registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his or her knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2021; the Forum received payment on August 16, 2021.
On August 17, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co>, and <oinbase.co> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 August 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2021, 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@coimbse.com, postmaster@coimbas.com, postmaster@coinbdse.com, postmaster@coimase.com, postmaster@coimbae.com, postmaster@cvoinbase.com, postmaster@cxoinbase.com, postmaster@oimbase.com, postmaster@cinbase.co, postmaster@cionbase.co, postmaster@coibase.co, postmaster@coinbae.co, postmaster@coinbse.co, postmaster@conibase.co, postmaster@ocinbase.co, postmaster@oinbase.co. Also on August 24, 2021, 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 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names here at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all five putative domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts the following:
i. the domains are all constructed in a similar manner, with close misspellings and/or typo-squatted versions of Complainant’s COINBASE mark;
ii. the domain names are all registered with the same registrar;
iii. the domain names were all registered in the same four-day time frame, either on May 10 or May 13, 2021;
iv. ten of the domain names report e-mail addresses based on <…protonmail.com> while the other six report e-mail addresses based on <…namecheap.com>; and
v. the domain names are either passively held or are used to offer pay-per-click links for the financial benefit of Respondent.
Because Respondent does not refute any of these assertions, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel determines that Complainant’s request must be granted. Accordingly, this Decision will refer to the collective of identified respondents throughout as a single Respondent. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the … domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same domain name holder.
A. Complainant
Complainant is a leading provider of end-to-end financial infrastructure and technology for the crypto-economy.
Complainant holds a registration for the COINBASE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,567,878, registered July 15, 2014.
Respondent registered the domain names <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co> and <oinbase.co> on one or the other of the dates May 10 or May 13, 2021.
All of the domain names are confusingly similar to Complainant’s COINBASE service mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not authorized Respondent to use the COINBASE mark in any way.
Respondent fails to a make a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of them.
Instead, Respondent employs the domain names to host pay-per-click links from the operation of which Respondent presumably derives revenue.
Each of the domain names is an instance of typo-squatting.
Respondent lacks both rights to legitimate interests in the domain names.
Respondent’s registration of more than fifteen domain names each of which is confusingly similar to Complainant’s COINBASE mark demonstrates a pattern of bad faith domain name registrations.
Respondent knew of Complainant’s rights in the COINBASE mark when it registered the domain names.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are now 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the COINBASE service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary svcs. limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of [¶ 4(a)(i)] the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s domain names <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co> and <oinbase.co> is confusingly similar to Complainant’s COINBASE service mark. Each of the domain names incorporates a slightly misspelled version of the mark plus either the generic Top Level Domain (“gTLD”) “.com” or the country code Top Level Domain (“ccTLD”) “.co,” for Columbia. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum August 4, 2015):
The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ [in the challenged domain name] which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so [the] Panel finds them to be confusingly similar for the purposes of the Policy.
See also Bank of America Corp. v. Above.com Domain Privacy, FA 1629452 (Forum August 18, 2015) (finding that the domain name <blankofamerica.com> contained the entire BANK OF AMERICA mark and merely added and the letter ‘l’ to create a common misspelling of the word ‘bank,’ plus the gTLD ‘.com’).
Further see Lucasfilm Entertainment Company Ltd. LLC v. George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Finally, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co> and <oinbase.co> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the contested domain names, and that Complainant has not authorized Respondent to use the COINBASE service mark in any way. Moreover, the pertinent WHOIS information identifies the registrants of the domain names only as “Joao Golao” or “asd” or “Geraldo Macedo” or “Suspended Domain” or “Valdir Penha,” none of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent holds some of the challenged domain names passively (making no active use), while the others are used to host pay-per-click links from the operation of which Respondent presumably derives revenue. Neither of these uses is a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy.
As to Respondent’s use of some of the domain names to host pay-per-click links, apparently to its profit, see, for example, Express Scripts, Inc. v. Windgather Investments Ltd., D2007-0267 (WIPO April 26, 2007):
The Panel also accepts that before notice of the dispute began, the Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services (paragraph 4 (c)(i) of the Policy). The Respondent had apparently “parked” the Domain Name until it could be sold and the advertisements on the site were generated by the parking company. In this way, the Respondent allowed the parking company free reign over content…. The Panel therefore finds that the Respondent has no legitimate rights or interests in the Domain Name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
And, with regard to Respondent’s passive holding of the other domain names, see, for example, 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).
Further to the point, see Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that it was not using them 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)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that each of Respondent’s domain names is an instance of typo-squatting, i.e,: the deliberate misspelling of the mark of another in a domain name in order to take advantage of typing errors commonly made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is, under Policy ¶ 4(a)(iii), direct evidence of bad faith in the registration and use of a domain name. See, for example, Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding that a respondent engaged in typo-squatting, and thus registered and used challenged domain names in bad faith, where the domain names incorporated a UDRP complainant’s misspelled mark).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the COINBASE mark when it registered the disputed domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s rights in a mark that formed the basis of a confusingly similar domain name, and therefore, a respondent’s bad faith in registering it] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names, <coimbse.com>, <coimbas.com>, <coinbdse.com>, <coimase.com>, <coimbae.com>, <cvoinbase.com>, <cxoinbase.com>, <oimbase.com>, <cinbase.co>, <cionbase.co>, <coibase.co>, <coinbae.co>, <coinbse.co>, <conibase.co>, <ocinbase.co> and <oinbase.co> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 21, 2021
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