DECISION

 

SmartContract Chainlink, Ltd. v. Expiry Assignment Service / Afternic, LLC - On Behalf of Domain Owner

Claim Number: FA2403002089491

PARTIES

Complainant is SmartContract Chainlink, Ltd. ("Complainant"), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Expiry Assignment Service / Afternic, LLC - On Behalf of Domain Owner ("Respondent"), Delaware, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartcontracts.com> ("Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 20, 2024; Forum received payment on March 20, 2024.

 

On March 20, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <smartcontracts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2024 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@smartcontracts.com. Also on March 21, 2024, 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 11, 2024, 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.

 

On April 12, 2024 the Panel issued a Panel Order, requesting further information from the Complainant. In the Complaint, the Complainant had asserted that it had previously had control of the Domain Name, supported by a declaration made by the Complainant's representative. This declaration was made on information and belief by an individual with no direct knowledge of the circumstances. The Panel noted that had the Complainant previously held the Domain Name it would expect the Complainant to be able to provide some of the following evidence: evidence of the circumstances in which the Domain Name was acquired; evidence of expenditure on the Domain Name; evidence of how the Domain Name was used and historical Whois records demonstrating ownership rather than a declaration from an individual without direct knowledge. The Panel requested that the Complainant provide it with additional evidence to substantiate its claim of prior ownership of the Domain Name.

 

On or around April 18, 2024 the Complainant provided an Additional Submission in response to the Panel Order. Respondent failed to provide a response to the Additional Submission by April 24, 2024, the time period allowed in the Panel Order.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, SmartContract Chainlink, Ltd., owns and operates a blockchain supported network and offers various services under the SMARTCON and SMARTCONTRACT marks.  Complainant asserts rights in the SMARTCON mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 7,154,400, registered September 5, 2023).  Respondent's <smartcontracts.com> domain name is identical or confusingly similar to Complainant's SMARTCON mark as it wholly incorporates the SMARTCON mark, adding the generic term "tracts" which results in the replacement of the "con" abbreviation with the word "contracts" and adding the ".com" generic top-level domain ("gTLD").

 

Respondent has no rights or legitimate interests in the <smartcontracts.com> domain name.  Respondent is not authorized to use Complainant's SMARTCON mark and is not commonly known by the Domain Name.  Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use.  The Domain Name is inactive. Respondent acquired the Domain Name after it had been held by or under the control of Complainant for at least 8 years and Complainant omitted to renew it. Respondent then sought to exploit Complainant's reputation in its SMARTCON and SMARTCONTRACT marks by offering the Domain Name for sale at auction shortly after registration.  The Domain Name resolves to an inactive webpage, which as of March 13, 2024 resulted in warnings of phishing activity being provided to Internet users.  

 

Respondent registered and uses the <smartcontracts.com> in bad faith. Respondent registered the Domain Name following the failure of Complainant to renew its registration and then offered the Domain Name for sale. Respondent does not actively use the Domain Name and has sought to exploit Complainant's reputation in its SMARTCON and SMARTCONTRACT marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

Complainant's Additional Submission consisted of two declarations made by the General Counsel of an affiliated entity of the Complainant. The declarations exhibit a Whois record demonstrating that as of October 14, 2014 the Domain Name was held in the name of Sergey Nazarov, the co-founder and CEO of the Complainant. The declarations state that the Domain Name was owned, managed and renewed by employees of the Complainant's affiliated entity, primarily for defensive purposes, and exhibits evidence of the Domain Name being renewed by an individual employed by the Complainant on December 12, 2022 for one year. That employee left the Complainant in 2023 and the Domain Name was not renewed following his departure.

 

FINDINGS

Complainant holds trademark rights for the SMARTCON mark.  The Domain Name is confusingly similar to Complainant's SMARTCON mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SMARTCON mark through its registration of the mark with the USPTO (Reg. No. 7,154,400, registered September 5, 2023).  Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <smartcontracts.com> domain name is confusingly similar to Complainant's SMARTCON mark because it wholly incorporates Complainant's SMARTCON mark and adds the generic term "tracts" and the gTLD ".com" to create a word ("contracts") that is abbreviated in the SMARTCON mark.  Adding a generic term and a gTLD to a wholly incorporated mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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."); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) ("Respondent merely adds the term 'supports' and a '.org' gTLD to the DELL mark. Thus, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's DELL mark per Policy ¶ 4(a)(i).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

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 SMARTCON 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 "Expiry Assignment Service / Afternic, LLC - On Behalf of Domain Owner" as registrant of record. Coupled with Complainant's unrebutted assertions as to 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 presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that Respondent acquired the Domain Name after Complainant failed to renew it and then posted the domain name for sale on a public auction site for an amount well in excess of any out-of-pocket costs shortly afterwards. Such conduct is not, absent any other information, a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds, on the balance of probabilities, that the actions of Respondent, in registering the Domain Name in or around December 2023 following the failure of Complainant to renew the Domain Name (and then using it to take advantage of any reputation that arose from its use by Complainant by immediately placing it up for auction) amounts to opportunistic registration which may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) ("Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use."); see also Florists' Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Forum June 27, 2002) ("Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent's opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).").

 

The Panel reaches this conclusion with some reluctance, noting that the Domain Name, while corresponding to a mark (SMARTCON) registered by Complainant and another mark (SMARTCONTRACT) used by Complainant, consists of two generic words (smart contracts) that together have a generic meaning. It may have been the case that Respondent registered and sought to sell the Domain Name for its generic meaning and did so unaware of Complainant. However, Respondent has chosen not to participate in this proceeding and provide any explanation of its activities and there is no other evidence before me that would enable me to reach a conclusion that supports an absence of bad faith registration on the balance of probabilities. In such circumstances, I am entitled to accept all reasonable allegations set forth in the Complaint, namely that Respondent opportunistically registered the Domain Name, which had been held by or by associates of Complainant for at least 8 years, in awareness of the Complainant and its reputation and sought to capitalize on this reputation by offering the Domain Name for sale. This amounts to registration and use in bad faith under Policy ¶ 4(b)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <smartcontracts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: April 25, 2024