Complainant is GMO Internet, Inc. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Domain ID Shield Service CO., Limited of Hong Kong, China / Laura Yun, Offshore Hosting Solutions Ltd. of Victoria, Mahe, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2018. On March 6, 2018, the Center transmittedby email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 12, 2018 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 16, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 19, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant states that it is “was originally founded in 1991 and provides a wide variety of services over the Internet, such as domain name registry operation”; that it is “the parent company of the GMO Internet group”; and that it, directly or through subsidiaries “employs around 5,000 people, and had consolidated Net Sales of over USD 1.25 billion for the last financial year 2016.” Complainant further states that it “is currently developing its own cryptocurrency mining chip” and that it “also provides services related to cryptocurrencies, an industry where the generic term ‘MINING’ is commonly used”.
Complainant states, and provides evidence to support, that it “and its group companies own many registrations of or including the mark GMO, including the following (the “GMO Trademark”):
- United States of America Registration No. 4,158,003 (registered June 12, 2012), for use in connection with “computer game programs”; and “[e]ntertainment services, namely, providing on-line games from a computer network”
- Japanese Registration No. 4,690,668 (registered July 11, 2003).
The Disputed Domain Name was created on December 31, 2017, and is being used in connection with a website that, as described by Complainant (and as shown by a screenshot) contains “the GMO group logo in its header, showing the name ‘GMO Internet’” along with a “website footer show[ing] the catch-phrase ‘Powered by GMO’ and the name ‘GMO Internet Mining Shop’” plus a “contact us page show[ing] GMO Internet group real address as contact address”. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the GMO Trademark because “the word ‘GMO’ contained in the contested domain is identical to Complainant’s trademark rights and is used in the same way as in the names of all its group companies (in the specific order GMO+name)”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“Respondent is not licensed to use the Complainant’s trade marks, nor is the Respondent in any way associated with the Complaint or other of the Complainant’s group of companies”; “Respondent is in no way authorised by or affiliated with the Complainant”; the Disputed Domain Name was registered “long after the mark was first used and registered by the Complainant”; “the domain has been set up purely to attempt to take advantage of the complainant goodwill by free-riding on the repute of its trademark”; “investigations have failed to locate any registrations for “GMO” or any variant in the name of the respondent”; and “using the contested domain to try and sell products while trying to falsely associate such products with the GMO Internet group and its trademark is clearly commercial in nature and would appear to constitute an infringement of the Complainant’s trade mark rights”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he term GMO associated with the term ‘mining’ is nothing but an attempt to take an unfair advantage of the complainant trademark, based on the complainant’s recent activities,” which includes “recently creat[ing] a new company named ‘GMO COIN’, who provides services related to cryptocurrencies” and that Complainant “is currently developing its own cryptocurrency mining chip”; “[b]y the use of the mark GMO in the contested domain name, the Respondent intentionally attempted to use the reputation of the Complainant so that users may be deceived”; and Respondent has lost four previous proceedings under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GMO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the GMO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “gmomining”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
It is obvious that the Disputed Domain Name contains the GMO Trademark in its entirety and simply adds the word “mining”. As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here, given that “mining” of cryptocurrency is related to Complainant’s goods and services, the Panel finds that inclusion of the word “mining” in the Disputed Domain Name affirms confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“Respondent is not licensed to use the Complainant’s trade marks, nor is the Respondent in any way associated with the Complainant or other of the Complainant’s group of companies”; “Respondent is in no way authorised by or affiliated with the Complainant”; the Disputed Domain Name was registered “long after the mark was first used and registered by the Complainant”; “the domain has been set up purely to attempt to take advantage of the complainant goodwill by free-riding on the repute of its trademark”; “investigations have failed to locate any registrations for “GMO” or any variant in the name of the respondent”; and “using the contested domain to try and sell products while trying to falsely associate such products with the GMO Internet group and its trademark is clearly commercial in nature and would appear to constitute an infringement of the Complainant’s trade mark rights”.
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant specifically argues that bad faith exists in this case pursuant to paragraph 4(b)(iv) of the Policy. The Panel agrees. As set forth in section 3.1.4 of WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Moreover, the use of the Disputed Domain Name, namely a website which creates a misleading impression that it is somehow related to or associated with Complainant, is a clear example of registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 1, 2018
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