The Optimism Foundation v. Mary Lapointe
Claim Number: FA2303002034404
Complainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Mary Lapointe (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optimismgatewey.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 3, 2023; Forum received payment on March 3, 2023.
On March 3, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <optimismgatewey.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@optimismgatewey.com. Also on March 6, 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 April 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, The Optimism Foundation, develops open-source software used in conjunction with the Ethereum blockchain to facilitate fair access to the blockchain and to other financial transactions on the internet.
Complainant has common law rights in the OPTIMISM mark based upon continuous and widespread use, as well as, widespread recognition. Respondent’s <optimismgatewey.com> domain name is confusingly similar to Complainant’s OPTIMISM mark as it contains Complainant’s mark in its entirety, merely adding the misspelled generic term “gatewey” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <optimismgatewey.com> domain name. Respondent is not licensed or authorized to use Complainant’s OPTIMISM mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant to gain internet users’ financial information.
Respondent registered and uses the <optimismgatewey.com> domain name in bad faith. Respondent registered and uses the at-issue domain name to pass off as Complainant. Additionally, Respondent’s use of a privacy shield in registering the domain name shows bad faith registration. Finally, Respondent registered and uses the at-issue domain name with actual knowledge of Complainant’s rights in the OPTIMISM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the OPTIMISM mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the OPTIMISM trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant in furtherance of a scheme designed to defraud third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
As determined in a recent UDRP decision where Complainant was also the complainant, Complainant has common law trademark rights in its OPTIMISM mark sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See The Optimism Foundation v. Margaret Clark, FA2303002034051 (Forum Mar. 31, 2023)(“[T]he Panel is satisfied from Complainant’s evidence (including evidence of marketing, third party media coverage, use as a business name and its reputation in the cryptocurrency community, including recent series B fundraising) that Complainant’s use of the OPTIMISM mark for its blockchain technology is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the OPTIMISM mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <optimismgatewey.com> domain name contains Complainant’s OPTIMISM trademark followed by a misspelled variant of the suggestive term “gateway” i.e., “gatewey” with all followed by the “.com” top-level. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <optimismgatewey.com> domain name from Complainant’s OPTIMISM trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <optimismgatewey.com> domain name is confusingly similar to Complainant’s OPTIMISM trademark. 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 an at-issue domain name from a mark under Policy ¶ 4(a)(i).); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Mary Lapointe” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <optimismgatewey.com>. The Panel therefore concludes that Respondent is not commonly known by the <optimismgatewey.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to pass itself off as Complainant to gain access to internet users’ financial information. Respondent’s <optimismgatewey.com> website mimics Complainant’s genuine website including Complainant’s cryptocurrency wallet interfaces. Website visitors falsely believing they are dealing with Complainant may thus mistakenly give up their private financial information to Respondent. Respondent’s use of the <optimismgatewey.com> domain name in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <optimismgatewey.com> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above, Respondent uses the at-issue domain name to pass itself off as Complainant to facilitate Respondent’s fraudulently appropriating private personal data. Respondent’s plot to extract personal data from <optimismgatewey.com> website visitors indicates Respondent’s bad faith registration and use of the at-issue domain name under the 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.”); see also Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith).
Moreover, Respondent registered <optimismgatewey.com> while knowing that Complainant had trademark rights in the OPTIMISM mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to address a website mimicking Complainant’s genuine website. Respondent’s prior knowledge of Complainant's trademark further shows that Respondent registered and used <optimismgatewey.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under 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 <optimismgatewey.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 3, 2023
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