The Complainant is Depository Trust & Clearing Corporation of New York, New York, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Stewart Scott of Georgetown, Canada, represented by Daniel Brinza Law Professional Corporation, Canada. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 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 the Respondent of the Complaint, and the proceedings commenced on October 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. On November 6, 2018, the Respondent requested an automatic four-day extension of the deadline to file the Response. On the same day, the Center granted the requested extension and confirmed that the new deadline for the Response was November 10, 2018. The Response was filed with the Center on November 10, 2018.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 14, 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.
The Center’s invitation to the Complainant to file an amendment to the Complaint stemmed from the fact that the Respondent had been using the services of a WhoIs privacy service, the Respondent’s name only coming to light on Registrar verification. The amended Complaint substituted the name of the Respondent for the WhoIs privacy service named in the original Complaint. 4. Factual Background
The Complainant, a United States corporation, claims to be one of the world’s preeminent providers of post-trade services to the global financial community, including clearing, settlement and institutional trade processing services.
The Complainant is the proprietor of various trade mark registrations comprising or including the acronym DTCC. For present purposes it is sufficient to cite just two of them, namely:
United States Registration No. 2,593,532 DTCC (design plus words, letters and/or numbers) registered July 16, 2002 (application filed January 28, 2000) in classes 36 and 38 for various financial trade processing services and electronic messaging services.
United States Registration No. 5,309,424 DTCC (standard characters) registered October 17, 2017 (application filed July 10, 2016) in classes 9, 35, 36, 38, 41 and 42 for a range of goods and services relating to financial transactions.
Both the above registrations feature first use claims dating back to 1999.
The Domain Name was registered on September 14, 2015 by the Respondent, a resident of Canada, and is connected to a parking page of the Registrar indicating that the Domain Name is for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s DTCC trade mark (supra); that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith, the Complainant’s primary claim being that the Respondent registered the Domain Name with a view to selling it at a profit to the Complainant (paragraph 4(b)(i) of the Policy). B. Respondent
The Respondent denies that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Respondent contends that, contrary to an assertion of the Complainant that the term “blockchain” is descriptive, at the time that the Domain Name was registered in 2015 the term “was an exotic and/or new term, mysterious and not well understood” leading to the conclusion that there are enough differences between the Domain Name and DTCC to enable consumers to differentiate between them.
The Respondent denies that the first of the Complainant’s trade mark registrations cited in Section 4 above is sufficient to base a claim under paragraph 4(a)(i) of the Policy, pointing out that the registration is not a registration of DTCC, but a device mark registration in which the first element is a distinctive spiral device preceding the acronym DTCC. The Respondent states “The contested domain does not contain the Complainant’s trade mark in its entirety, and the contested domain further adds a second distinctive word to further counteract any residual similarity.” The Respondent points out that all the other registrations cited by the Complainant, such as the second of the Complainant’s registrations cited in Section 4 above, which is for the acronym alone, post-date registration of the Domain Name.
The Respondent categorises the Complainant’s claim to common law rights in respect of the mark DTCC as a naked assertion unsupported by any relevant evidence of long and extensive use. The Respondent points out that DTCC is an acronym apt for use by others, such as the Delaware Technical Community College and is “also a very common commercial abbreviation for “direct-to-consumer channel”.
The Respondent asserts that he has “legitimate rights and interest” in respect of the Domain Name. He admits that he has no connection with the Complainant, has no relevant trade mark registrations and is not commonly known by the Domain Name, but continues:
“However, the Respondent submits that he is making a legitimate, non-commercial, and fair use of the Disputed Domain Name, without intent for commercial gain. When he registered the Disputed Domain Name on September 14, 2015, the Respondent had a bona fide intention to host a blog on the topic of “use cases for the emergent concept of blockchain”, not necessarily in the financial field. At no time since the date of registration has the Disputed Domain Name been used for offering financial transactional services or any other uses which would constitute infringement of the Complainant’s alleged trademark rights.”
He explains his use of the acronym: ‘D’ for “data”; ‘T’ for “Technology” and “CC” for the first initials of the names of his two children.
Shortly after registering the Domain Name he realized that he did not have the time to devote to his planned blog and parked it, intending to revive his plan at a later date. He explains the “for sale” message on the parking page as being the result of his having failed to tick a box offered by the Registrar as part of the registration process. Nothing that he has done has in any way impacted adversely on the business of the Complainant.
The Respondent contends that the Complainant’s evidence as to the fame of its DTCC trade mark in 2015 when the Domain Name was registered goes anywhere near establishing that he, a resident of Canada, was or should have been aware of the Complainant’s DTCC mark. He further observes that none of the Complainant’s claimed trade mark registrations cover Canada.
The Respondent denies that the Domain Name has been registered and is being used in bad faith. The main plank of his defence to the allegation of bad faith registration and use is that as at the date of registration of the Domain Name he “had no knowledge and no reasonable way of acquiring knowledge in Canada of the Complainant and its trade mark.”
The Respondent attacks the Complainant for overstating its case on inadequate evidence, evidence which he categorises as being in certain respects downright misleading if not false. He requests a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing his decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. Identical or Confusingly Similar
The first step for the Complainant to establish is that it has trade mark rights. It then has to establish that the Domain Name is identical or confusingly similar to its trade mark. For the purpose of this, the First Element, it matters not that the trade mark may be unregistered, may not cover the jurisdiction in which the Respondent resides or trades, may not cover the goods or services in relation to which the Respondent uses the Domain Name and that the rights in question may not have come into existence until a date after registration of the Domain Name. For the purposes of the First Element the key point is that the trade mark rights were in existence when the Complainant filed the Complaint. Everything else is likely to have a part to play when it comes to consideration of the Second and Third Elements.
As this Panel pointed out in ZB, N.A., dba Zions First National Bank v. Oneandone Private Registration, 1&1 Internet Inc / John Mike,WIPO Case No. D2017-0137:
“It is well-established that for the purposes of this assessment under paragraph 4(a)(i) of the Policy the jurisdiction in which the Complainant has claimed trade mark rights is an irrelevant consideration as are the categories of goods and services covered by the Complainant’s trade mark rights. Accordingly, the fact that the parties may operate in different jurisdictions and in different industries is not a matter that the Panel takes into consideration under this Element of the Policy, although it may be of relevance to the issues to be addressed under the Second and Third Elements of the Policy.”
There is no dispute that the Complainant had registered trade mark rights in respect of the acronym DTCC as at the date of the filing of the Complaint in the form of United States Registration No. 5,309,424 DTCC (standard characters) registered October 17, 2017 (application filed July 10, 2016) in classes 9, 35, 36, 38, 41 and 42.
Had it been necessary the Panel would have found that the Complainant has unregistered trade mark rights in respect of the DTCC trade mark (see below) and would also have found that the United States Registration No. 2,593,532 DTCC (design plus words, letters and/or numbers) registered on July 16, 2002 (see Section 4 above) would have sufficed as a basis for the Complaint. The Respondent argues that the design element of this mark renders the trade mark insufficient for this purpose. However, the acronym is prominent and represents the only textual element of the mark. As observed in Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), trade marks featuring design elements only tend to be disregarded for the purpose of the assessment under paragraph 4(a)(i) of the Policy where the design elements swamp the textual elements, which is not the case in relation to this trade mark registration.
Is the Domain Name identical or confusingly similar to the Complainant’s DTCC trade mark? It comprises the Complainant’s DTCC trade mark, the word “blockchain”, which is descriptive of a type of distributed ledger technology, and the “.com” generic Top-Level Domain (“gTLD”) identifier.
The gTLD identifier may be ignored for the purpose of this assessment, where, as here, it serves no purpose other than a technical one. Thus the comparison is between “DTCCblockchain” and “DTCC”. As explained in section 1.7 of the WIPO Overview 3.0, the First Element functions primarily as a standing requirement, the test for confusing similarity involving “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. Section 1.8 of the WIPO Overview 3.0 deals with the question: “Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark?” and answers it as follows:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the First Element. The nature of such additional term(s) may however bear on assessment of the Second and Third Elements.”
The Complainant’s DTCC trade mark is clearly recognisable within the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
Section 2 of WIPO Overview 3.0 deals with issues in relation to this, the Second Element under the Policy. The second paragraph of section 2.1 explains:
“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 Complainant has made out a prima facie case to the satisfaction of the Panel. The Complainant has established that the Domain Name features its DTCC trade mark and is confusingly similar to that trade mark. Moreover, it is not in dispute that the Domain Name has no obvious association with the Respondent. The Respondent is not known by the Domain Name or anything close to it and the only use to which the Domain Name is being put is to link it to a parking page indicating that it is for sale. The Complainant’s case is that the Domain Name was registered with the Complainant and its ‘blockchain’ interest in mind and with a view to selling it to the Complainant at a profit. The Respondent has a case to answer.
The Respondent’s answer is that when he registered the Domain Name he was unaware of the existence of the Complainant and had no reason to be aware of the Complainant. He states that he registered the Domain Name with “a bona fide intention to host a blog on the topic of “use cases for the emergent concept of blockchain”, not necessarily in the financial field.” He adopted the acronym DTCC with ‘D’ standing for “data”; ‘T’ for “Technology” and “CC” for the first initials of the names of his two children.
Nowhere in the Response is there any indication of the Respondent’s background or field of activity, although the Panel infers from his desire to host a blog concerned with ‘blockchain’ that he is familiar with that technology. “Blockchain” is defined in the Merriam-Webster online dictionary as “a digital database containing information (such as records of financial transactions) that can be simultaneously used and shared within a large decentralized, publicly accessible network.”
The Panel would have found it helpful to have had more information from the Respondent as to both the basis for his interest in ‘blockchain’ technology and his plans for the Domain Name.
The Respondent goes to some lengths in the Response to assert that the Complainant had no relevant trade mark rights prior to its trade mark registrations and attacks the Complainant for having asserted the existence of longstanding prior unregistered rights without having adduced any supporting evidence. While it is true that one would have expected more in the way of supporting evidence, the Complaint invited a visit to the Complainant’s website, an invitation that the Panel took up. The Complainant’s website featuring press material going back to the financial crisis in 2008 amply demonstrated the widespread use at that time of the acronym “DTCC” by third parties to reference the Complainant. The website also featured the Complainant’s Annual Reports, all boldly headed “DTCC” and indicating that the Complainant’s business as at that date and since has been substantial with revenues running into many hundreds of millions of United States dollars.
The Complainant was not the only party to invite attention to the Complainant’s website. The Respondent provided a link to the Complainant’s website and an article dated October 15, 2015 by the Complainant’s then President and CEO. He referred to it to demonstrate that as at that date (close to the date of registration of the Domain Name) ‘blockchain’ would not at that stage be taken as being a descriptive term but as “an exotic and/or new term, mysterious and not well understood.” However, the relevant passage in the article, which the Respondent cites as being authoritative on the topic and dealing with issues arising from inter alia alternative finance and transformational shifts in how we invest, borrow and bank reads as follows:
“These processes were in dire need of both automation and simplification. “The Paperwork Crisis” was solved by the formation of The Depository Trust & Clearing Corporation (DTCC), a user-owned cooperative that automated, centralized and standardized processes in the capital markets, such as clearing and settlement. In this case, industry participants recognised that centralising functions within a market utility could provide enormous economies of scale to drive down processing costs while also mitigating risk.
We have seen this phenomenon play out many times during our 20 years of operations in London. Collaboration creates opportunities to evolve existing models for the better, and enables the industry to remain competitive by enhancing operating efficiencies. The fact that a UK bank recently started allowing customers to pay retailers through the use of Twitter handles speaks volumes about the ability of traditional financial institutions to reinvent themselves and the way they do business. Newer technologies, like blockchain and distributed ledgers, are intriguing as we explore ways to leverage them to further drive down post-trade risks and costs, while still meeting the high standards established through decades of market regulation and practices.”
Thus by the time that the Respondent filed the Response the Respondent had visited the Complainant’s website and knew very well that the Complainant was a substantial international business, which had made a long and extensive use of the acronym. The Respondent’s contrary contentions were to his knowledge baseless. Clearly, in the view of the Panel, by September 2015 when the Respondent registered the Domain Name the Complainant would have established common law trade mark rights in respect of its DTCC acronym in the financial services field and that acronym would have been well known by those engaged in the fintech environment.
Annex 2 to the Response is the result of a Google search conducted by the Respondent in 2018 in response to the Complaint, but featuring entries dated May 6, 2015 referring to “DTCC’s Blockchain Symposium”. If the Respondent was familiar with that area of activity in September, 2015, it is more likely than not, in the view of the Panel, that he was aware of the Complainant and its ‘blockchain’ interest when he registered the Domain Name.
As indicated, the Respondent denies all knowledge of the Complainant and its DTCC trade mark at the date of registration of the Domain Name, but the Panel feels unable to accept that denial. The Panel is of the view on the balance of probabilities that the Complainant’s contentions are likely to be well-founded. The reasons are as follows:
1. The name “DTCC Blockchain” is an unusual combination of letters and words and as at September 2015 was uniquely associated with the Complainant.
2. To have come up with such a combination independently the Respondent would have had to come forward with a demonstrably likely explanation. For that explanation to have had credibility the Panel would have had to know something about the Respondent and his interest in the ‘blockchain’ technology. He has provided no such information.
3. The only personal information provided by the Respondent is that his children’s first names both commence with the letter “C”, thereby explaining his choice of the acronym: “D” for data, “T” for Technology, followed by “C” and “C”. He does not supply the first names of his children, but in any event the explanation comes across to the Panel as implausible; akin to the reason supplied by the respondent in Prada S.A. v. Y.B. el Bakkali,WIPO Case No. DNL2012-0074 () (respondent liked the domain name because his “little nephew made this sound”).
4. The Respondent and his representative must have known that the explanation was sufficiently short of obvious credibility to have demanded greater specificity if it was ever to be accepted.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel finds on the balance of probability that the Respondent selected the Domain Name with knowledge of the Complainant and with a view to targeting the Complainant. While it is true that the Respondent has not approached the Complainant with an offer to sell the Domain Name to the Complainant, it is the fact that from the date of registration of the Domain Name it has been parked at a page indicating that it is for sale. Given the Panel’s finding that the Respondent’s explanation for his choice of domain name is unlikely to be credible and in the absence of any other explanation, the Panel believes it to be more likely than not that this was his objective. E. Reverse Domain Name Hijacking
There is nothing before the Panel to justify a finding of Reverse Domain Name Hijacking1 . 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: November 16, 2018
1 Since completion of this decision and the submission of it to the Center, the Center has received a submission from the Complainant responding to the Respondent’s request for a finding of Reverse Domain Name Hijacking. In light of this finding in Section 6E, the Panel has not felt it necessary to read it.
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