Complainant is Mobius Payments Corporation of Las Vegas, Nevada, United States of America (“United States” or “U.S.”), represented by Randazza Legal Group, PLLC, of Las Vegas, Nevada, United States.
The Respondent is David Gobaud of Wilmington, Delaware, United States, represented by Foster Pepper PLLC, of Seattle, Washington, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 13, 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 July 17, 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 July 23, 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 July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Response was filed with the Center on August 13, 2018.
The Center appointed Douglas M. Isenberg, Keith Gymer, and Jonathan Hudis as panelists in this matter on September 10, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted a 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 provides a signed Declaration from its CEO stating that it is “a payment processing company and is a member of the Electronic Transactions Alliance and the Direct Response Marketing Alliance”; that it is “authorized to process payments from the world’s largest credit card brands, including but not limited to Visa, Discover, MasterCard, and American Express”; that it operates a website using the domain name ; and that it “has become well-known in the payment processing industry and has spent more than [USD] 1,310,000 marketing its goods and services”.
Complainant further states, and provides evidence to support, that it owns the following U.S. service mark registrations:
- U.S. Reg. No. 3,953,788 for the mark MOBIUS PAYMENTS for use in connection with “[m]erchant services, namely, payment transaction processing services” (mark first used in commerce on April 8, 2010; and registered on May 3, 2011)
- U.S. Reg. No. 5,498,905 for the mark MOBIUSPAY for use in connection with “[m]erchant services, namely, payment transaction processing services” (mark first used in commerce on April 2, 2017; and registered on June 19, 2018)
The above registrations are referred to herein as “Complainant’s Marks”.
Complainant also states, and provides evidence to support, that it owns the following pending U.S. service mark application:
- U.S. Serial No. 87/889,223 for MOBIUS for use in connection with “[m]erchant services, namely, payment transaction processing services” (mark first used in commerce on April 8, 2010; application filed April 23, 2018)
According to the Registrar, the Disputed Domain Name was registered or acquired by Respondent on June 23, 2017.
Complainant states that the Disputed Domain Name is being used “solely to offer services competitive with those offered by Complainant Mobius”. A screenshot provided by Complainant shows a web page that includes the name “Mobius” followed by the phrase, “Connecting the World to the Blockchain Economy”.
Respondent states that he is the CEO of Mochi, Inc. (“Mochi”), which is “the rightful owner and operator of” the Disputed Domain Name and that Respondent “intended to list himself as the individual Registrant contact for the [Disputed] Domain [Name] rather than as the owner of the domain registration”.
Respondent states that “Mochi is a software company” that “provides highly innovative blockchain products and services, such as the MOBIUS cryptocurrency and MOBIUS DApp Store”; that “[b]lockchains are decentralized, peer-to-peer networked databases that can store and authenticate a variety of information”; that “Mochi’s blockchain services are used to create and maintain MOBIUS cryptocurrency”, which is “a digital form of currency where encryption techniques are used to regulate the generation of units and verify the transfer of funds, operating independently of a central bank”; and that “Mochi’s MOBIUS DApp Store is an online mobile and desktop application marketplace where users can access software applications using MOBIUS cryptocurrency”.
Respondent further states that its sales to date (since approximately June 2017) associated with the MOBIUS name are more than [USD] 39 million and that it “has spent approximately [USD] 1.4 million since approximately July 2017 to promote its MOBIUS services, which are offered primarily through the [Disputed] Domain [Name]”.
Respondent further states that “Mochi has consistently used the trademark MOBIUS since at least as early as July 2017”; that “Mochi chose MOBIUS and the [Disputed] Domain [Name] because of the shape of the Mobius strip as infinitely connected – the shape represents how Mochi connects different blockchains together and with the offline world seamlessly and without interruption”; that a “Mobius strip” is “a dictionary term” that identifies “a one-sided surface that is constructed from a rectangle by holding one end fixed, rotating the opposite end through 180 degrees, and joining it to the first end,” which is named after German mathematician August F. Mobius.
Respondent’s foregoing statements are supported by a declaration signed by Mr. Gobaud. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to Complainant’s Marks because the Disputed Domain Name “contains the entirety or dominant portion of” Complainant’s Marks and “Respondent is using the Infringing Domain Name to provide services competitive with Complainant’s”, which indicates that the Disputed Domain Name “can be objectively understood by visitors to be either identical or confusingly similar to” Complainant’s Marks.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“[b]y using [Complainant’s Marks] for financial goods and services and by using a domain name containing the entirety of the MOBIUS mark, and the dominant portion of the registered MOBIUS PAYMENTS mark, Respondent is creating an association between Complainant and Respondent” where none exists; Respondent did not begin using the Disputed Domain Name until after Complainant acquired rights in Complainant’s Marks, which indicates that Respondent used the Disputed Domain Name “to siphon off Complainant’s customers”; Respondent cannot show that it is commonly known by the Disputed Domain Name and “there is nothing to suggest the consuming public associates the term ‘Mobius’ with Respondent”; and “Respondent is clearly using the [Disputed] Domain Name for a commercial purpose”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent has used the [Disputed] Domain Name solely to offer services competitive with those offered by Complainant Mobius”; “[t]here is no plausible argument that a team as sophisticated as Respondent and his employees were completely unaware of Complainant’s registered rights in a substantially identical mark in connection with substantially the same services” when Respondent registered the Disputed Domain Name in June 2017, which was more than seven years after Complainant acquired common laws in its service marks; “[e]ven if Respondent argues that he did not have actual knowledge of the Mobius Marks at the time of his registration, constructive knowledge of a mark is properly applied in UDRP proceedings”; “Respondent’s registration and use of the Infringing Domain Name was clearly designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of Respondent’s infringing web site”; “Panels find a likelihood of confusion even though users may discover the unlikelihood of a business relationship between Complainant and Respondent”; and “[g]iven that Respondent uses the Infringing Domain Name to offer directly competing services, without so much as a disclaimer, makes it clear that confusion will occur – and likely has occurred – and was Respondent’s intention when it registered and used the [Disputed] Domain Name”. B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
- The Disputed Domain Name is not confusingly similar to Complainant’s Marks because “Complainant does not enjoy exclusive rights to any domain that merely includes the word ‘Mobius’ and this proceeding is not the proper forum for a trademark infringement dispute”; “[t]he clear differences between the parties’ goods, consumers, and websites are valuable evidence that Mochi’s use of the [Disputed] Domain [Name] is not confusingly similar with Complainant’s service mark registrations and is not intended to disrupt Complainant’s business” (Respondent states that Complainant is a credit card processor that “services merchants and financial institutions”, while Respondent is “a software company” servicing “end consumers and software developers” by “providing cryptocurrency and a software application marketplace that does not accept credit card payments”); and Complainant is “not entitled to a monopoly” in the word “Mobius”, which is “a dictionary word referencing the Mobius strip and noted mathematician August Mobius for whom the Mobius strip was named”.
- Respondent has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “before Mochi received any notification of this dispute, Mochi used its Domain in a successful and bona fide offering of goods and services”; “Mochi’s successful sales amounts and information were publicized prior to the Complaint”; and “Mochi has become commonly known by MOBIUS and MOBIUS NETWORK”, as shown by press references and Mochi’s expenditure of [USD] 1.4 million promoting the MOBIUS brand since July 2017.
- The Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, “Complainant makes several unsupported conclusory references to ‘clear’ bad faith and Mr. Gobaud’s ‘desire[] to disrupt Complainant’s business,’ yet provides no supporting evidence”; Complainant offers “no evidence that Mochi knew or was likely to have been aware of Complainant’s trademark when Mochi acquired the [Disputed] Domain [Name]”; “Mochi was unaware of Complainant until it received a letter from Complainant’s legal counsel in late December, 2017, months after it registered the [Disputed] Domain [Name]”;1 “Complainant offers no evidence that its MOBIUS PAYMENTS and MOBIUSPAY marks are well‑known”; “in a dispute like this one, where the domain involves a dictionary term and Complainant offers no evidence that its trademark is well-known, a trademark registration is not properly used as constructive knowledge and evidence of bad faith”; “Complainant alleges no facts that initial interest confusion has occurred here or is likely to occur”; Complainant and Respondent “are not competitors and do not offer the same products”; and “Complainant provides vague allegations that Internet users may be directed to the wrong website, but provides no examples, no support, and continues to rely on conclusory statements and authority that is not on point”.
In addition, in its Response, Respondent requests that the Panel issue a finding of Reverse Domain Name Hijacking (“RDNH”) because “Complainant knew at the time that it filed the Complaint that it could not prove one or more of the essential elements required by the UDRP and lacked candor by failing to disclose that knowledge to the Panel”. Specifically, Respondent states that, when Complainant sent a demand letter to Respondent before filing the Complaint, “Mochi already had launched its highly successful Initial Coin Offering and this information was publicized”; “[t]he Complaint provides only unsupported conclusory statements and inapplicable citations to authority”; “[w]here, as here, a complainant provides no evidence that indicates the respondent was likely to have registered the disputed domain name to target complainant’s business, failing one of the essential elements required under the Policy, a finding of RDNH is proper”; and the Complaint is “similar to ‘Plan B’ cases where a party, frustrated in its efforts to purchase a domain it wants, resorts to a highly contrived and artificial claim not supported by evidence or the plain wording of the UDRP”. C. Complainant’s Supplemental Filing
Complainant submitted an unsolicited Supplemental Filing. Although the Panel has read the entire Supplemental Filing, the Panel considers the Supplemental Filing only to the extent that it addresses RDNH, for the reasons described below. With respect to RDNH, after making additional arguments on the three substantive elements of the Policy, Complainant states simply: “For the foregoing reasons, the Panel should find that Respondent violated the UDRP and order the transfer of the Infringing Domain Name to Complainant. Even if it does not, however, there are no grounds for the Panel to find RDNH here.” D. Respondent’s Objection to Complainant’s Supplemental Filing
Respondent objected to Complainant’s Supplemental Filing because “Complainant had a full opportunity to file a Complaint as well as an Amended Complaint in July. Respondent’s Response was timely filed on August 13 and accepted as complete. Now, this ‘Reply’ from Complainant is lodged 23 days after the Response – a longer amount of time than Respondent had to file its Response”. Respondent further argues that “Complainant provides no arguments or facts as to why it was unable to provide the Reply information in its Amended Complaint and provides no exceptional circumstances. Complainant’s ‘Reply’ consists only of a reiteration of its Amended Complaint arguments, responses to arguments Complainant should have anticipated in its Complaint, and a short conclusory denial of Reverse Domain Name Hijacking that does not include legal authority or new evidence”. 6. Preliminary Issue: Complainant’s Supplemental Filing
The Policy, the Rules and the Supplemental Rules do not expressly address supplemental filings. However, they are “generally discouraged, unless specifically requested by the panel”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. Here, the Panel did not request a supplemental filing from Complainant. Where a party submits an unsolicited supplemental filing, the submitting party “should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ‘exceptional’ circumstance)”. However, Complainant’s Supplemental Filing does not contain any such showing of exceptional circumstances. Nevertheless, because Respondent has asked the Panel to enter a finding of RDNH, the Panel considers Complainant’s Supplemental Filing to the extent that it addresses that issue. See, e.g., Puls Elektronische Stromversorgungen GmbH v. NetIdentity,WIPO Case No. D2002-0205 (“[i]n light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainant’s Supplemental Filing insofar as it is relevant to that issue.”); and Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd.,WIPO Case No. D2001-0941 (where a respondent asks a panel to find reverse domain name hijacking, “the Complainant is entitled to defend itself” and, therefore, a supplemental filing from the Complainant along with relevant supporting documents “should be admitted in their entirety”). 7. 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 service mark registrations cited and provided by Complainant, it is apparent that Complainant has rights in and to Complainant’s Marks, that is, the marks MOBIUS PAYMENTS and MOBIUSPAY. It is unclear to what extent Complainant may have rights in and to the mark MOBIUS per se, which is not protected by a registration, although, for the reasons explained below, rights in and to the mark MOBIUS are not decisive to the Panel’s analysis.
As to whether the Disputed Domain Name is identical or confusingly similar to Complainant’s Marks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “mobius”) 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 3.0, section 1.11.1.
Therefore, the Panel evaluates whether the second-level portion of the Disputed Domain Name, “mobius”, is identical or confusingly similar to Complainant’s Marks, MOBIUS PAYMENTS or MOBIUSPAY. As set forth in section 1.7 of WIPO Overview 3.0: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” The WIPO Overview 3.0 adds: “[W]here 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, the dominant feature of Complainant’s Marks is “mobius.” See, e.g., Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark, LLC v. Anthony Lynch and Anthony ceo,WIPO Case No. D2015-0166 (finding domain names containing the word “taylor” but not “gang” confusingly similar to the trademark TAYLOR GANG where “Complainant has alleged that ‘taylor’ is the dominant portion of the TAYLOR GANG trademark, and that Respondent has incorporated this dominant portion of the trademark into the disputed domain names”); La Quinta Worldwide L.L.C. v. Satoshi Shimoshita,WIPO Case No. D2007-1241 (finding the domain name confusingly similar to trademarks that contain the words “LA QUINTA,” because “the Domain Name comprises the principal textual element of the majority of the Complainant’s trade/service mark registrations”); and Amegy Bank National Association v. Domain Admin, Privacy Protection Service Inc d/b/a PrivacyP / Mohamed Amarochan,WIPO Case No. D2014-1210 (finding the domain name confusingly similar to the trademarks AMEGY BANK and AMEGYBANK (Stylized) because, inter alia, “the disputed domain name contains the dominant portion of the Complainant’s trademarks”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to Policy, paragraph 4(c), a respondent may demonstrate its rights or legitimate interests in a disputed domain name by proving any of the following circumstances:
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent] ha[s] acquired no trademark or service mark rights; or
(iii) [Respondent] [is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Respondent has denied knowledge of Complainant and Complainant’s Marks when Respondent registered the Disputed Domain Name. A declaration signed by Respondent and submitted in support of the Response clearly states: “Neither I nor Mochi were aware of Complainant or its business when the [Disputed] Domain [Name] was registered.” The Panel has no reason in the circumstances to question this declaration. Indeed, the Policy and the Rules do not provide the Panel with specific authority to ascertain the Respondent’s credibility in the absence of discovery. General Motors LLC v. Chad Clegg,WIPO Case No. D2012-2196 (citing Nicholas Lee Jumblatt, Jumbie LLC v. SlantMedia,WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).
Furthermore, although Complainant has rightly argued that “constructive knowledge of a mark is properly applied in UDRP proceedings,” it is applied only under certain circumstances. WIPO Overview 3.0, section 3.2.2, says that application of the constructive notice doctrine “may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.”2 Here, these factors are unclear, given that Complainant apparently owns only two relevant trademark registrations, one of which was obtained after Respondent’s registration of the Disputed Domain Name; Complainant has provided no documentation regarding the strength of its service marks other than a single sentence in a declaration that, since 2010, Complainant “has become well-known in the payment processing industry and has spent more than [USD] 1,310,000 marketing its goods and services”; and the word “mobius” (which forms the entirety of the second-level portion of the Disputed Domain Name) is in fact a so-called dictionary word that the Panel has found in 69 federal trademark registrations in the United States, many of which predate Complainant’s rights.3 Under these circumstances, the Panel declines to find on the present record that Respondent necessarily should have known of Complainant’s Marks.
Therefore, the Panel finds that, based on the record submitted in this proceeding, Respondent did not have notice of Complainant’s Marks when it registered the Disputed Domain Name. In fact, Respondent may not have obtained such notice until Complainant sent a demand letter to Respondent on December 20, 2017 – six months after Respondent registered the Disputed Domain Name. Under these circumstances, it would appear as if, before any notice to Respondent of the dispute, Respondent used the Disputed Domain Name in connection with a bona fide offering of goods or services, giving Respondent rights or legitimate interests under paragraph 4(c)(i) of the Policy.
The Panel therefore finds that Respondent used the Disputed Domain Name in connection with a bona fide offering of goods or services, giving Respondent rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel holds that Complainant has failed to prove the second element specified under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the Panel’s finding with respect to paragraph 4(a)(ii) of the Policy, above, the Panel declines to make a finding with respect to paragraph 4(a)(iii), as doing so is unnecessary to the Panel’s decision. 8. Reverse Domain Name Hijacking
As noted above, Respondent has asked the Panel to make a finding of RDNH. Under the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO Overview 3.0, section 4.16, states:
“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith […] such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”
The Panel does not find any of these (or any other relevant) reasons applicable here, and therefore declines to find that Complainant engaged in RDNH as alleged by Respondent. 9. Decision
For the foregoing reasons, the Complaint is denied. The Panel declines to find that Complainant has engaged in Reverse Domain Name Hijacking.
Douglas M. Isenberg
Presiding Panelist
Keith Gymer
Panelist
Jonathan Hudis
Panelist
Date: September 24, 2018 CONCURRING OPINION FROM PANELIST JONATHAN HUDIS:
While I concur in the result reached by the majority, I write separately to address the “registered and used in bad faith” requirement under paragraph 4(a)(iii) of the Policy; which the majority believes is “unnecessary to the Panel’s decision” to decide.
In order to prove that the Disputed Domain Name was registered and is being used in bad faith, paragraph 4(b) of the Policy provides a non-exclusive list of factors that Complainant must show (in addition to any other proof of bad faith not provided for under the Policy). Comparing this non-exclusive list of factors to the evidence of record, I would not find that the Disputed Domain Name was registered or is being used by Respondent in bad faith.
To begin, there is no evidence of record that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. There also is no evidence of record that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to a competitor of Complainant. Moreover, neither of these arguments was advanced in the Complaint or amended Complaint.
There further is no evidence of record that Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting its marks in a corresponding domain name, much less that Respondent engaged in a pattern of such conduct. In fact, Respondent made of record several other available domain names that Complainant could register in addition to what it already has been using and is using.
There also is no evidence of record that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of Complainant as competitor. In fact, it does not appear from the submitted record that the Parties are competitors. Complainant is a payment processor whose customers are sophisticated credit card companies: e.g., Visa, Mastercard, and the like. Respondent is a conduit for cryptocurrency transactions (e.g., Bitcoin) through blockchain technology and a proprietary app directed to the general public.
There finally is no evidence of record that Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. While not directly relevant to our decision, I find persuasive that the Parties’ websites look nothing alike. What is directly relevant to our decision is that the services offered through the Parties’ websites are directed to different potential customers.
While Respondent might be faulted for failing to conduct a trademark search prior to adopting the MOBIUS name and Disputed Domain Name, that fact alone is insufficient for a finding of bad faith. WIPO Overview 3.0 section 3.2.2.provides:
“In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. Application of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.”
(Emphasis added.)
None of these factors have been shown from the evidence made of record.
For these reasons, including the absence of any other proof of bad faith not specifically mentioned in paragraph 4(b) of the Policy, I would find that Complainant has not presented sufficient evidence or argument that the Disputed Domain Name was registered and is being used by Respondent in bad faith under paragraph 4(a)(iii) of the Policy.
Jonathan Hudis
Panelist
Date: September 24, 2018 CONCURRING OPINION OF PANELIST KEITH GYMER, BUT DISSENTING FROM OPINION OF JONATHAN HUDIS:
I concur with the majority decision to dismiss this Complaint based on the Panel’s views that Respondent does appear to have commenced and used the Disputed Domain Name in connection with a bona fide offering of specialized goods and services in relation to blockchain technology without knowledge of Complainant’s prior registrations. Consequently, in my view, any consideration of the question of bad faith use of the Disputed Domain Name is moot, and I would respectfully disagree with the conclusions on this question as expressed by my colleague in his opinion above. In particular, I would consider that it is very possible that the Parties are, or will be competitors insofar as Respondent’s new technology may replace that of Complainant as customers move to online payment systems using blockchain. There are already many businesses accepting blockchain currency payments in addition to conventional credit card transactions. Just as Complainant may be providing back-end services to credit card companies and businesses, Respondent will also necessarily have to provide back-end blockchain services to those business who are sophisticated enough to accept such payment methods. Nor would I consider differences in the Parties’ websites to be at all persuasive in these circumstances. One presently relates to an established technology, the other to a new one. Differences would be expected. That does not exclude the conclusion they are in competition. For such reasons, in the present case, I consider that the majority decision of the Panel to decline to make any finding with respect to paragraph 4(a)(iii) of the Policy is the appropriate one in the circumstances.
Keith Gymer
Panelist
Date: September 24, 2018
1 Inexplicably, Complainant does not refer to this demand letter in its Complaint.
2 Although Complainant has raised the issue of constructive knowledge when arguing the third (bad faith) element of the UDRP, it is also relevant to the second (rights or legitimate interests) element, given that a respondent’s knowledge of a trademark could inform its “notice” of a dispute under paragraph 4(c)(i) of the UDRP.
3 “[I]t has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” WIPO Overview 3.0, section 4.8.
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