The Complainant is Groupement des cartes bancaires of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, Coinbase, Inc. of San Francisco, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with MarkMonitor Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that it is the Registrar for the disputed domain name and the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. Upon the Respondent’s request, the Center granted an automatic extension of 4 days, i.e. until March 4, 2019, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on March 4, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 19, 2019. 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
The Complainant provides a system of payments and cash-withdrawals by card involving some 108 banks or payment institutions and processing more than 10 billion transactions. The card scheme is operated under the designation “CB”.
The Complainant has registered a number of domain names for, or including, “CB”; including , , , , and .
The Complainant is the owner of numerous trademarks in either plain script or figurative style. These include:
- French Registered Trademark No. 1368872, CB, in respect of goods and services in International Classes 16, 28, 35, and 36 including financial affairs. This trademark was registered on August 28, 1986.
- European Union Trademark (“EUTM”) No. 000269290, CB, in respect of goods and services in International Classes 16, 35, and 36 including:
Insurance and finance, namely insurance underwriting, foreign exchange bureaux; issuing of travellers’ cheques and letters of credit; financial affairs, monetary affairs, banking; savings banks; management of banking and monetary flow by electronic means; electronic purse services; issuing of and services relating to prepayment cards, debit cards, credit cards, cash withdrawal cards, chip (integrated circuit) cards, magnetic cards, and smart cards; issuing of bank cards, non-electronic; cash withdrawal using chip (integrated circuit) cards, electronic funds transfer; electronic payment; card payment services; prepaid card services; financial transactions by card holders via automated teller machines; authentification and verification of parties involved; financial information via all means of telecommunication; authorisation and regulation of payments by card numbers; remote secure payment; financial information, namely remote collection of financial information and data.
Trademark No. 000269290 was registered on September 29, 2005.
- European Union Trademark No. 000269415, figurative representation of CB, in respect of the same goods and services in International Classes 16, 35, and 36 as EUTM No. 000269290. Trademark No. 000269415 was registered on November 12, 1999.
The Complainant points out that in a decision affirmed by the Ninth Chamber of the General Court of the European Union, the Opposition Division of EUIPO ruled that EUTM No. 000269415, one of the Complainant’s figurative versions of the trademark, “enjoys a highly enhanced degree of distinctiveness”.
The Complainant has provided evidence of numerous other registrations for the figurative versions of its trademark in France, the European Union, and as an International Registration. Some of these are for a more extensive range of goods and services than the three trademarks identified above. All have been registered before the disputed domain name was registered.
The disputed domain name was first registered to the Respondent on November 7, 2018.
The Respondent was founded in San Francisco in the United States in June 2012. It provides a market for buying and selling cryptocurrencies such as Bitcoin, Ethereum, and Litecoin. According to the Response, there are more than 20 million users of the Respondent’s services from 47 countries and it has processed more than USD 150 billion in trades. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of all the registered trademarks for CB in either plain or figurative styles referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.markets” TLD, the disputed domain name is identical to the Complainant’s proven trademarks. In the case of the figurative versions of the trademark, it is permissible to have regard only to the verbal elements of the trademark for the reasons outlined in WIPO Overview 3.0, section 1.10.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The Complainant contends that “cb” is not a generic term and does not correspond to the Respondent’s name. Further, the Complainant points out that the disputed domain name does not resolve to an active website and so there can be no suggestion that the Respondent is using the disputed domain name in connection with a good faith offering of goods or services. In connection with the third element of the Policy, the Complainant further alleges that the disputed domain name is being offered for sale.
There is no dispute between the parties that the Respondent is not in any way associated with the Complainant and has not been licensed by the Complainant to use its CB trademarks.
Contrary to the Complainant’s assertions, however, CB is not necessarily distinctive solely of the Complainant’s services as it can be an acronym for many different names and activities. A simple example is the well-known “cb radio”. The Respondent provides evidence of other one thousand records in the registers of trademarks of both the United States and the European Union which include “cb”. Many of these include “cb” as part of some composite element, such as OCBC BANK, CBS STAGES CANADA, or JCB. Nonetheless, there are certainly numerous registrations which consist of, or contain, “cb” as a distinct element in itself including, for example, Clydesdale Bank’s registration for a figurative version of CB, EUTM No. 000030007.
In addition, the letters “cb” can readily be understood as an acronym derived from the Respondent’s name, Coinbase, Inc. It has a subsidiary or related company in the United Kingdom named CB Payments Ltd. The Respondent also claims that it and third parties “frequently” refer to it as CB rather than “Coinbase” in full. It provides three limited examples to support that claim.
Further, according to the Respondent, it does not use the disputed domain name for a public-facing service such as a website. However, it does use the disputed domain name internally as “the backend for some of its other markets infrastructure”.
The Panel accepts that there may be use of a domain name in good faith for the purposes of paragraph 4(b) of the Policy even though the use is not evidenced in a public facing website. In the present case, the Respondent has provided some screenshots which, on their face, appear to support the Respondent’s claim. It is not clear where the Respondent’s usage in this manner takes place. Also, it is internal use, not apparently public facing. Accordingly, it is not at all clear that the way the Respondent is using the disputed domain name can be characterised as infringing on the Complainant’s rights.
Further, the Respondent denies that it has ever offered the disputed domain name for sale. As the Respondent notes, the Complainant has not identified the basis for this claim. The Respondent speculates that it is based on the statement included at the top of the WhoIs search results provided by DomainTools included as Annex 1 to the Complaint. This notice states: “Cb.markets is for sale! This domain is listed for sale at one of our partner sites. Visit our partner to buy Cb.markets”.
The Respondent denies authorising DomainTools to include such a notice. Indeed, the Panel’s own experience, albeit anecdotal, is that some service providers, including DomainTools, routinely include such notices in their WhoIs reports without any authority from the domain name holder at all.
In the present case, the Respondent uses a different registrar and service provider to DomainTools. As there is no relationship between the Respondent and DomainTools, therefore, the Respondent is not in a position to control DomainTools’ conduct and so should not have DomainTools conduct attributed to it.
Taking all these matters into account, the Panel finds the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name. The letters “cb” are a natural derivation from the Respondent’s name and do not, in the circumstances outlined above, appear to be used in bad faith.
As the Complainant has not established the second requirement under the Policy, the Complaint must fail. C. Registered and Used in Bad Faith
As the Complaint cannot succeed, no useful purpose would be served by considering this requirement under the Policy. Nonetheless, the Panel formally records its findings that the Complainant has not proven the Respondent registered or has used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides, in part:
“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.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that the Complaint has failed is not sufficient in itself to support a finding of reverse domain name hijacking. See WIPO Overview 3.0, section 4.16.
As the Respondent argues, the Complainant should have been well aware of the identity of the Respondent and the nature of its activities. Even the most rudimentary of “Google” searches would have revealed sufficient information about the Respondent. Moreover, contrary to the Complainant’s contentions, the letters “cb” have an obvious derivation from the Respondent’s name. The Complaint’s bald allegations to the contrary are not tenable.
These factors do support a finding of Reverse Domain Name Hijacking. Two factors tend to the contrary. First, it was not possible for the Complainant to ascertain if and how the Respondent was in fact using the disputed domain name in the absence of a public facing use such as publicly accessible website. As noted above, there is no obligation under the Policy that use in good faith necessarily be use in public for all to see. Nonetheless, the fact that the use was not open to public inspection is a factor which must be taken into account in weighing the appropriateness under the Policy of the Complainant’s decision to bring the Complaint.
Secondly, the disputed domain name was offered for sale in the DomainTools WhoIs report. Other factors might have led to questions about whether the Respondent was in fact offering the disputed domain name for sale. However, the fact of the apparent offer and the lack of any publicly accessible use of the disputed domain name mean that, on balance, the Panel is not prepared to make a finding of bad faith on the part of the Complainant in this case.
Accordingly, the Panel does not make a finding of Reverse Domain Name Hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A Rothnie
Sole Panelist
Date: April 2, 2019
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