SmartContract Chainlink, Ltd. v. Nicky Johnson
Claim Number: FA2212002023610
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona. Respondent is Nicky Johnson (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chainlinklimited.online> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on December 12, 2022; Forum received payment on December 12, 2022.
On December 12, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <chainlinklimited.online> 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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@chainlinklimited.online. Also on December 13, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, SmartContract Chainlink, Ltd., owns and operates a blockchain supported network. Complainant asserts rights in the CHAINLINK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,694,500, registered March 12, 2019) and other agencies. Respondent’s <chainlinklimited.online> domain name is identical or confusingly similar to Complainant’s mark because it contains the CHAINLINK mark in its entirety, merely adding the generic or descriptive term “limited” and the generic top-level domain (“gTLD”) “.online” to form the Domain Name.
Respondent does not have rights or legitimate interests in the <chainlinklimited.online> domain name. Respondent is not licensed or authorized to use Complainant’s CHAINLINK mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the Domain Name, as it resolves to an inactive page.
Respondent registered and uses the <chainlinklimited.online> domain name in bad faith. Respondent capitalizes on the goodwill associated with Complainant’s mark by attempting to confuse consumers as to the source of the Domain Name. Respondent makes no active use of the Domain Name. Respondent had actual or constructive knowledge of Complainant’s rights in the CHAINLINK mark when registering the Domain Name, as shown through Respondent’s use of Complainant’s mark in the Domain Name. Finally, Respondent failed to respond to Complainant’s cease-and-desist letters and used a privacy service to register the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHAINLINK mark. The Domain Name is confusingly similar to Complainant’s CHAINLINK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 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”).
Complainant has rights in the CHAINLINK mark based on registration with the USPTO (e.g., Reg. No. 5,694,500, registered March 12, 2019). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <chainlinklimited.online> domain name is confusingly similar to Complainant’s CHAINLINK mark as it fully incorporates the CHAINLINK mark and adds the word “limited” and the “.online” gTLD. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CHAINLINK mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Nicky Johnson” as registrant of record. Coupled with Complainant’s unrebutted assertions as to the absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, October 19, 2022, Respondent had actual knowledge of Complainant’s CHAINLINK mark. The Complainant has used the CHAINLINK mark, a coined compound word, for several years and has developed a significant online reputation in the mark at the time the Domain Name was registered. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that wholly incorporates to the CHAINLINK mark and the words “limited” and “.online” (which give the impression that the Domain Name redirects to the online portal of an entity known as Chainlink Ltd) other than to take advantage of Complainant’s reputation in the CHAINLINK mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); 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.”)
Respondent has, without alternative explanation (or active use), registered a domain name that wholly incorporates the coined CHAINLINK mark. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the CHAINLINK mark and the addition of words suggesting an online portal for services offered by Complainant) and in the absence of any Response or other explanation for such inactivity by the Respondent, the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <chainlinklimited.online> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 5, 2023
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