SmartContract Chainlink, Ltd. v. Anna Smirnoff
Claim Number: FA2303002035964
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, US. Respondent is Anna Smirnoff (“Respondent”), RU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stakechainlink.net>, 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 March 15, 2023; Forum received payment on March 15, 2023.
On March 20, 2023, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <stakechainlink.net> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. 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 March 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@stakechainlink.net. Also on March 20, 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 Russian Language Notification of Respondent Default.
On April 15, 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. That being so, the language of the proceeding is Russian unless, pursuant to Rule 11 (a), the Panel determines that in all the circumstances, another language is more appropriate.
It is established practice in determining this issue to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as compelling in resolving that issue have been: WHOIS information which establishes Respondent in a country which would normally demonstrate familiarity with a language different from the language of the Registration Agreement; filing of a trademark registration with an entity which shows an understanding of that language; and any other evidence (or lack thereof) exhibiting Respondent’s understanding of such a language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may also weigh the relative time and expense in enforcing the language of the Registration Agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Complainant submits that Respondent is capable of communicating in English, because the Disputed Domain is in English and uses the term “stake” (an English word meaning to support, and also a common term in the cryptocurrency industry related to rewards for holding digital assets); (ii) the resolving website of the Disputed Domain is in English; and (iii) it would be unfair to request Complainant to translate the Complaint and accompanying documents into Russian because it will put an undue financial burden on Complainant and delay resolution of the dispute. At the same time, it would not be unfair to Respondent if the proceeding is conducted in English because Respondent appears to understand English and has availed itself of the English language when it created the Disputed Domain in English and provided the resolving website in English.
Taking all of these circumstances into consideration, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel finds that the proceeding should be in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, SmartContract Chainlink, Ltd. is in the blockchain business.
Complainant submits that it has rights in the CHAINLINK mark based upon its
registration of the mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. no. 5,694,500, registered March 12, 2019). See
Compl. Annexes 1-4. Respondent’s <stakechainlink.net>
domain name is
confusingly similar to Complainant’s CHAINLINK trademark because it incorporates the mark in its entirety and adds the
descriptive word “stake” and the generic top-level domain name (“gTLD”) “.net”.
Respondent does not have rights or legitimate interests in the <stakechainlink.net> domain name. Respondent is not licensed or authorized to use Complainant’s CHAINLINK mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing off as Complainant in furtherance of a phishing scheme. In addition, Respondent previously offered competing products or services on the disputed domain name’s resolving webpage, while Respondent currently fails to make active use of the disputed domain name.
Respondent registered and uses the <stakechainlink.net> domain name in bad faith. Respondent uses the confusing similarity of the disputed domain name to attract users with a false sense of association with Complainant. Further, Respondent previously used the disputed domain name to pass off as Complainant in the furtherance of a phishing scheme. However, currently Respondent inactively holds the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s CHAINLINK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that is engaged in the blockchain industry.
2. Complainant has established its rights in the CHAINLINK mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 5,694,500, registered March 12, 2019).
3. Respondent registered the <stakechainlink.net> domain name on December 24, 2022.
4. Respondent has caused the disputed domain name to be used to attempt to pass itself off as Complainant in furtherance of a phishing scheme. In addition, Respondent previously offered competing products or services on the disputed domain name’s resolving web page, but currently fails to make active use of the disputed domain name.
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 CHAINLINK mark based upon its registration of the mark with the USPTO (e.g., Reg. no. 5,694,500, registered March 12, 2019). See Compl. Annexes 1-4. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant has provided evidence of registration of the CHAINLINK mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHAINLINK mark. Complainant argues that the <stakechainlink.net> domain name is confusingly similar to Complainant’s CHAINLINK trademark because it incorporates the mark in its entirety and adds the descriptive word “stake” and the gTLD “.net”. Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s CHAINLINK 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 name 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)); 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”).
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 CHAINLINK mark and to use it in its domain name, adding the generic word “stake” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <stakechainlink.net> domain name on December 24, 2022;
(c) Respondent has caused the disputed domain name to be used to attempt to pass itself off as Complainant in furtherance of a phishing scheme. In addition, Respondent previously offered competing products or services on the disputed domain name’s resolving webpage, but currently fails to make active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <stakechainlink.net> domain name because Respondent is not licensed or authorized to use Complainant’s CHAINLINK mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Use of a privacy service further evidences a respondent is not commonly known by a disputed domain name. See 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Anna Smirnoff.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent also does not use the <stakechainlink.net> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark, offerings of similar products, and a clickable hyperlink to “Connect your wallet”. See Compl. Annex 10. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii);
(g) Complainant contends that Respondent previously used the <stakechainlink.net> domain name to offer competing products or services. Use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, the Panel notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of similar products. See Compl. Annex 10. Therefore, the Panel finds that Respondent has not provided a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii);
(h)Complainant argues that Respondent currently inactively holds the <stakechainlink.net> domain name. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of 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).”). Here, Complainant provides screenshots of the disputed domain name’s current resolving webpage showing the error message “This site can’t be reached”. See Compl. Annex 11C. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the <stakechainlink.net> domain name to create a likelihood of confusion by attempting to pass itself off as Complainant. Attempts to create a likelihood of confusion and pass off as a complainant evidences bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain. Here, the Panel again notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark, offerings of similar products, and a clickable hyperlink to “Connect your wallet”. See Compl. Annex 10. Thus, the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent had actual knowledge of Complainant’s CHAINLINK mark because of Respondent’s use of the mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, the Panel again notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of similar products. See Compl. Annex 10. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent inactively holds the <stakechainlink.net> domain name. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use under Policy ¶ 4(a)(iii). See 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.”). Here, the Panel recalls that Complainant provides screenshots of the disputed domain name’s current resolving webpage showing the error message “This site can’t be reached”. See Compl. Annex 11C. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent engages in a phishing scheme. Use of a disputed domain name in furtherance of a phishing scheme further establishes its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Here, the Panel again notes Complainant provides screenshots of the disputed domain name’s previous resolving webpage showing use of Complainant’s mark, offerings of similar products, and a clickable hyperlink to “Connect your wallet”. See Compl. Annex 10. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <stakechainlink.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 15, 2023
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