DECISION

 

The Optimism Foundation v. Feiling Huang

Claim Number: FA2404002095155

PARTIES

Complainant is The Optimism Foundation ("Complainant"), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Feiling Huang ("Respondent"), represented by Jianzhi Jin of Man Kun Law Firm, Shanghai, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <opns.domains>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Francine Siew Ling Tan as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 26, 2024; Forum received payment on April 26, 2024.

 

On April 26, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <opns.domains> 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 April 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@opns.domains. Also on April 29, 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.

 

A timely Response was received and determined to be complete on May 23, 2024.

 

On May 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Francine Siew Ling Tan as Panelist.

 

On May 29, 2024, Complainant submitted an unsolicited Supplemental Filing (the "Supplemental Filing").

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a global leader in facilitating fair access to the blockchain and to other financial transactions on the Internet through its open-source software that is used in conjunction with the Ethereum blockchain.

 

Complainant, through its OPTIMISM and "OP services", provides a secure and trusted software platform for access to digital currency and blockchain transactions. Complainant's OPTIMISM brand has become and remains synonymous with secure access to digital currency and is famous within the meaning of U.S. trademark law.

 

Complainant is the creator of the Optimism cryptocurrency token, which is traded on cryptocurrency exchanges under the symbol "OP." Complainant owns U.S. trademark registration No. 7140145 for OPTIMISM, registered on August 15, 2023. Complainant states that it also owns U.S. trademark applications and common law rights to the OP mark, a common abbreviation for OPTIMISM, and owns common law rights to [image red-and-white OP logo] (the "Logo").

 

Complainant began using its OPTIMISM and OP marks in commerce in 2019 and the Logo since as early as 2020.

 

Complainant registered the domain name <optimism.io> on May 19, 2015.

 

The disputed domain name is confusingly similar to the Complainant's OPTIMISM and OP marks. The disputed domain name stands for "OPtimism Name Service", and is both an abbreviation of the OPTIMISM mark, and an acronym for "name service". Taken together, the disputed domain name incorporates the Complainant's trade marks in order to lure third parties into believing the services of Respondent are affiliated with Complainant, including by copying Complainant's distinctive Logo on its website.

 

The disputed domain name contains the common abbreviation of the OPTIMISM mark and the OP mark. Earlier panel decisions have found that common abbreviations of marks are sufficient to find confusing similarity with those marks.

 

Respondent has no rights or legitimate interests in the disputed domain name, the OPTIMISM mark, the OP mark, and the Logo. Respondent is using Complainant's OPTIMISM and OP marks, and the Logo to mislead Internet users into believing that Respondent is affiliated with Complainant when it is not. 

 

Respondent registered the disputed domain name on February 9, 2023, i.e. approximately four years after Complainant first began using the OPTIMISM mark. Respondent is not commonly known by Complainant's trade mark. Complainant has never licensed or permitted Respondent to use Complainant's OPTIMISM or OP marks, or the Logo.

 

Respondent is neither making a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name. Respondent is using the disputed domain name to pass itself off as an affiliate of Complainant by using Complainant's OPTIMISM and/or OP marks and Logo in an attempt to confuse unsuspecting visitors into believing Respondent is affiliated with Complainant. Respondent's use of [red-and-white OPNS image] on its website is made in an attempt to gain notoriety by suggesting sponsorship of its website by Complainant. This does not constitute a bona fide offering of goods and services.

 

The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a website that uses Complainant's trade mark, which is a clear indication of bad faith. Respondent's website promotes services affiliated with Complainant's OPTIMISM and OP Mainnet service. This shows Respondent's actual knowledge of Complainant and its trade marks. Respondent is capitalizing on Complainant's fame and notoriety to create a webpage with Complainant's protected intellectual property to promote Respondent's own business. Respondent also utilized a privacy service when registering the dispute domain name, which is an indication of bad faith.

 

B. Respondent

 

On March 17, 2023, Respondent's affiliated company, Web3 Investments Ltd., filed U.S. trademark application No. 97843638 for OPTIMISM NAME SERVICE.

 

Following the registration of the disputed domain name and filing of the trademark application for OPTIMISM NAME SERVICE, Respondent actively engaged in domain name business activities under the disputed domain name. It owns common law rights in Optimism Name Service and OPNS.

 

The disputed domain name is dissimilar to the Complainant's OPTIMISM or OP marks, and to the Complainant's <optimism.io> domain name. The generic Top Level Domain ("gTLD") in the disputed domain name and in Complainant's domain name <optimism.io> are different. Each gTLD is also associated with different purposes.

 

OPNS is not similar to OPTIMISM. OPNS stands for "Optimism Name Service" and is not an abbreviation of OPTIMISM.

 

Complainant does not own trademark rights in OP and does not have any common law rights to the OP mark or the Logo. OP cannot be naturally associated with OPTIMISM. Complainant has not established common law rights in the OP Mark or the Logo.

 

Respondent has rights or legitimate interests in the disputed domain name. Respondent was using the disputed domain name in connection with a bona fide offering of goods or services before the dispute. Respondent's business activities predate the registration of Complainant's OPTIMISM trade mark.

 

Respondent registered and used the disputed domain name for its descriptive value. Respondent has been commonly known by the disputed domain name, having established social media influence and public recognition in the Web3 domain registration field. Respondent has been making fair use of the disputed domain name, without intent to misleadingly divert consumers or to tarnish the trade mark at issue. Respondent's webpage discloses that the operating entity is not affiliated with Complainant and therefore no confusion would arise.

 

The disputed domain name was not registered and used in bad faith. Respondent registered the disputed domain name before Complainant's registration of the OPTIMISM trade mark. Respondent's use of a privacy service, without more, is not an indication of bad faith. Respondent's business will not disrupt Complainant's business. The services provided by Respondent do not compete with those offered by Complainant but add value to Complainant's community and promote the development of Complainant's business. Complainant has never offered Web3 domain services to its users, and there is no factual basis for users to think that the disputed domain name is affiliated with Complainant.

 

FINDINGS

(a)       The disputed domain name is not confusingly similar to the OPTIMISM trademark in which Complainant has rights. 

 

(b)       The Panel declines to analyze the issues of Rights and Legitimate Interests and of Registration and Use in Bad Faith as the first element under the Policy has not been established by Complainant.

 

DISCUSSION

Preliminary Issue: Supplemental Filing

Before discussing the merits of the case, the Panel first addresses the issue of the Supplemental Filing which was made to Forum by Complainant on May 29, 2024,

 

The Rules do not make provision for supplemental filings except at the request of the panel. While panels have the authority under Paragraph 10 of the Rules to determine the admissibility, relevance, materiality and weight of the evidence, panels are also to conduct the proceeding "with due expedition" (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 4.6).

 

The Panel notes that the Supplemental Filing was made 6 days after the filing of the Response. Complainant's Supplemental Filing provides rebuttal to Respondent's arguments. Supplementary filing by a complainant for the mere purpose of responding to points raised by the respondent which could otherwise have been raised in its complaint is not reason enough to allow the supplemental filing.  There is no indication that the Supplemental Filing provides evidence which was not available to Complainant when the Complaint was filed, or which is pertinent and could not have possibly been included in its original filing. The Panel finds no "exceptional circumstance" or crucial information which necessitates allowing the Supplemental Filing. Accordingly, in the exercise of the Panel's discretion under Paragraph 10 of the Rules, the Panel declines to consider the Supplemental Filing in the rendering of this Decision. 

 

Substantive Issues

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.

 

Identical and/or Confusingly Similar

Complainant has established it has rights in the OPTIMISM trade mark.

 

Complainant asserted that it has common law rights to and "owns U.S. trademark applications" in the OP trade mark. However, Complainant has not furnished any evidence of such trademark applications.

 

Common law rights in a mark may be established through evidence. (See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) where the complainant showed "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning"; see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015): "Panels have found that extensive use and fame can establish a complainant's common law rights in a mark. The Panel has considered the evidence adduced by Complainant of the history of developing the Oculus Rift device and the media coverage that this has engendered and finds that Complainant has established common law rights in the OCULUS RIFT mark through extensive, continuous, and well published use of the mark in connection with its business as a provider of virtual reality headsets and peripherals.  Complainant has provided numerous published articles, website screenshots, and forum discussions that demonstrate the fame associated with Complainant's use of the OCULUS RIFT mark.")  

 

Complainant failed to provide evidence showing extensive, continuous and well-publicized use of the OP mark which would persuade the Panel of the fame of the OP mark, or that the public primarily associates the OP mark with Complainant. The mere indication that the OP mark has been used since 2019 alone does not prove that the mark has acquired secondary meaning. The Panel therefore finds that Complainant has failed to show it has common law rights in the OP mark.

 

Hence, the issue to be considered in relation to paragraph 4(a)(i) of the Policy is whether the disputed domain name which consists of the letters "opns" is confusingly similar to the Complainant's OPTIMISM trade mark.

 

In this regard, Complainant has argued that "OPNS" is an abbreviation of its OPTIMISM mark ("OP") and an acronym of "name service" ("NS"), and that because there are earlier panel decisions which have found that abbreviations of marks are sufficient to find confusing similarity with those marks for the purposes of paragraph 4(a)(i) of the Policy, therefore the disputed domain name is confusingly similar to the Complainant's marks.

 

The Panel disagrees. The test for confusing similarity is well established it "involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (WIPO Overview 3.0, section 1.7.)

 

Complainant has failed to show that it has common law rights in "OP". To state that the letters "opns" in the disputed domain name are confusingly similar to the trade mark OPTIMISM and that the disputed domain name "incorporates Complainant's trademarks" is a stretch, since the trade mark OPTIMISM is not at all recognizable within the domain name. The Panel does not agree as a general principle that abbreviations per se can be said to be confusingly similar to a trade mark. Each case has to be considered based on its own facts and argued on its own merits. While there may have been earlier UDRP cases which have accepted e.g. that "MS" is a common abbreviation for and confusingly similar to the MORGAN STANLEY trade mark (which is a case cited by Complainant - Morgan Stanley v. James Honeygreen, FA 2035429 (Forum Apr. 8, 2023), in the case before this Panel, Complainant has not brought evidence demonstrating that "OPNS" is a common abbreviation for Complainant's trade mark OPTIMISM. The Panel therefore finds no justification in making a finding in favor of Complainant on this point especially in the absence of clear, incontrovertible evidence demonstrating that the letters in the domain name are indeed a common abbreviation for Complainant's OPTIMISM mark. Mere assertions without foundation and supporting evidence are insufficient. 

 

The gTLD is a technical requirement of domain name registrations and does not factor into the analysis of confusing similarity with the infringed trademark.

 

Complainant has established it has rights in the OPTIMISM trade mark. However, the OPTIMISM trade mark is not reproduced nor identifiable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is not identical or confusingly similar to the OPTIMISM mark.

 

Paragraph 4(a)(i) has therefore not been established by Complainant.

 

DECISION

Having not established paragraph 4(a)(i) required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <opns.domains> domain name REMAIN WITH Respondent.

 

 

 

 

Francine Siew Ling Tan, Panelist

Dated: June 3, 2024