The Optimism Foundation v. Anna Fedorov
Claim Number: FA2301002029050
Complainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, USA. Respondent is Anna Fedorov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bridgeoptimismgateway.com> and <protocoloptimismgateway.com>, registered with Registrar of Domain Names REG.RU 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 Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 25, 2023; Forum received payment on January 25, 2023.
On February 1, 2023, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 February 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@bridgeoptimismgateway.com, postmaster@protocoloptimismgateway.com. Also on February 3, 2023, 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 March 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a more appropriate language in which the proceeding should be conducted. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant submits that English is a more appropriate language because Respondent is proficient in English. In that regard, Complainant notes that the disputed domain names consist of the combination of English words as does the OPTIMISM English language trademark. In addition, all of the content on Respondent’s resolving websites is in English. See Compl. Annex 05. Moreover, the Complainant submits that because it would result in an undue burden and delay to translate the Complaint into Russian, the proceeding should be conducted in the English language.
The Panel finds that persuasive evidence has been adduced by Complainant to suggest the probability that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant made the following contentions.
Complainant, The Optimism Foundation, develops blockchain software applications. Complainant has common law rights in the OPTIMISM mark and has also filed trademark applications with the United States Patent and Trademark Office (No. 90,549,900, which was filed on February 26, 2021). See Compl. Annex 02. Respondent’s domain names are confusingly similar to the OPTIMISM mark as they include the entire mark while merely adding generic terms and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names since Respondent is not licensed or authorized to use Complainant’s OPTIMISM mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is misleading Internet users by passing off as Complainant in an attempt to defraud Complainant’s customers.
Respondent registered and uses the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names in bad faith by passing itself off as Complainant in furtherance of a fraudulent scheme for commercial gain. In addition, Respondent registered the disputed domain names with a privacy service and had actual knowledge of Complainant’s rights in the OPTIMISM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Cayman Islands company that develops blockchain software applications.
2. Complainant has established its common law trademark for OPTIMISM and that it acquired that trademark at least by 2020.
3. Respondent registered the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names on December 15, 2022.
4. Respondent has caused the disputed domain names to be used to mislead Internet users by passing itself off as Complainant in an attempt to defraud Complainant’s customers.
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 OPTIMISM mark through trademark application and under the common law. Under Policy ¶ 4(a)(i), registration of a trademark is not required if a Complainant can demonstrate common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Therefore, the Panel may agree that Complainant need not provide evidence of a trademark registration to show rights in the OPTIMISM mark.
Complainant registered the optimism.io domain name on May 19, 2015 and first began using the OPTIMISM mark in commerce in 2020. See Compl. Annex 01. Complainant’s trademark application for the OPTIMISM mark was filed on February 26, 2022 (No. 90,549,900). See Compl. Annex 02. Here, Complainant provides evidence that the OPTIMISM mark is well-known in association with blockchain transactions because Complainant has used extensive marketing efforts in that regard and the mark has been recognized by numerous media outlets. See Compl. Annex 04. Therefore, as the Panel agrees, it finds that Complainant has sufficiently established its common law rights in the OPTIMISM mark.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s OPIMISM mark. Complainant argues that the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names are confusingly similar to its OPTIMISM mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The disputed domain names use the entire mark, then add generic words (“bridge”; “gateway”; “protocol”) and the “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, additional words are insufficient to defeat a finding of confusing similarity that is otherwise present. Given that Respondent only adds generic words and a gTLD to the OPTIMISM mark, the Panel finds that the disputed domain names are confusingly similar to Complainant’s OPTIMISM mark under Policy ¶ 4(a)(i).
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 names 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OPTIMISM mark and to use it in its domain names, adding only generic words that cannot negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names on June 10, 2021;
(c) Respondent has caused the disputed domain names to be used to mislead Internet users by passing itself off as Complainant in an attempt to defraud Complainant’s customers;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the OPTIMISM mark. In the absence of a response, WHOIS information may be used 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). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support for a finding that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. 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 for both disputed domain names lists the registrant as “Anna Fedorov.” See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the OPTIMISM mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent seeks to confuse Internet users as to the source of the resolving site by passing itself off as Complainant. Previous Panels have found that use of a domain name to mislead and divert customers to a site that impersonates a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In this case, Complainant provides evidence that the disputed domain names resolve to pages which appear to be copied directly from Complainant’s legitimate website. Compare Compl. Annex 05 (Respondent’s copied pages) with Compl. Annex 06 (Complainant’s legitimate page). As the Panel agrees that Respondent appears to be passing itself off as Complainant and confusing customers by copying Complainant’s website, the Panel finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent is passing itself off as Complainant to defraud customers by stealing their cryptocurrency funds. Panels have consistently held that use of a disputed domain name for phishing or other fraudulent purposes does not satisfy Policy ¶¶ 4(c)(i) or (iii). See e.g., DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (“Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, the site offers a place for users to deposit cryptocurrency funds and “Connect [their] Wallet.” See Compl. Annex 05. Respondent is, in Complainant’s words, “inducing unsuspecting visitors to connect their cryptocurrency wallet to Respondent’s interface.” Compl. p. 9. The Panel notes that this is exactly how Complainant’s legitimate site operates. See Compl. Annex 06. As the Panel determines that Respondent is engaging in fraud and stealing customers’ assets, it finds additional evidence that Respondent is not using the domain names for any bona fide offering of goods or services and legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names in bad faith by passing itself off as Complainant. Passing off has been held as evidence of bad faith attraction for commercial gain pursuant to 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.”). As noted, Respondent’s webpage duplicates Complainant’s webpage. See Compl. Annex 05. As the Panel finds that Respondent is passing itself off as Complainant, it finds bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant further argues that Respondent is using the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names to defraud customers. Phishing and other forms of fraud have been held to be independent evidence of bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Respondent attempts to solicit internet users to deposit funds into an account controlled by Respondent. See Compl. Annex 05. The Panel agrees and finds that Respondent’s fraudulent attempts to steal customer cryptocurrency funds is evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent’s registration of the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names with a privacy service evinces bad faith. See Compl. Annex 03. When a respondent registers a disputed domain name with a privacy service and chooses to conceal its identity, Panels have found support for a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that a privacy service is used to hide Respondent’s identity. See WHOIS information. As the Panel agrees, the use of a privacy service may serve as additional evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the OPTIMISM mark when registering the <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names. Actual knowledge is sufficient to establish bad faith. 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.”). To support this submission, Complainant notes that Respondent’s webpage is identical to Complainant’s webpage. As the Panel concludes that Respondent had actual knowledge of Complainant’s rights, it finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, 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 names using the OPTIMISM mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them 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 <bridgeoptimismgateway.com> and <protocoloptimismgateway.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 8, 2023
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