Complainant is Blockfi Inc., United States of America (“United States” or “U.S.”), represented by Haynes and Boone, LLP, United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Wes Fulford, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2021, 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 February 22, 2021, 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 February 26, 2021. 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 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 24, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on April 7, 2021. 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. Upon reviewing the case file, the Panel notes that it appears that the document entitled “Notification of Complaint and Commencement of Administrative Proceeding”, the Complaint (including annexes), and the amended Complaint (including annexes) may not have been delivered to the Respondent possibly due to the file size. Accordingly, a Panel Order was issued on May 4, 2021, which directed the Center to notify the Respondent of the above-mentioned documents in accordance with the file size and format modalities stipulated in paragraph 12(a) of the Supplemental Rules, allowing the Respondent a period of five days (by May 8, 2021) to indicate whether it would like to submit a Response. If the Respondent indicated that it would like to send a Response, it would have a period of 20 calendar days to do so from the day that the Panel Order was issued. The Respondent did not respond to the Panel Order. In light of the above, the decision due date has been extended to May 14, 2021. 4. Factual Background Complainant is a financial services company founded in 2017 dedicated to building a bridge between cryptocurrencies and traditional financial and wealth management products. Complainant’s platform manages more than USD 2 billion in assets and is backed by industry-leading investors including Valar Ventures, Morgan Creek Capital Management, Coinbase Ventures, Galaxy Digital, Susquehanna Government Products and Winklevoss Capital. Complainant has been referenced by several high-profile media outlets since its start in 2017. Complainant is active on social media, including on Twitter (which it joined in November 2017), Facebook (which it joined in February 2018) and YouTube (which it joined in January 2019) where Complainant posts numerous videos and podcasts on blockchain technology, cryptocurrency and wealth management. Complainant owns the following U.S. Trademark Registration (the “BLOCKFI Mark”): BLOCKFI Registration No. 5989814 (February 18, 2020) for Classes 36 (banking services, namely, [proving] *providing* bank accounts for cryptocurrency; providing loans secured by cryptocurrency; financing loans for cryptocurrency investors; etc.) and 42 (non-downloadable computer software for use as a cryptocurrency wallet; etc.). On December 4, 2020, Respondent registered the Disputed Domain Name. On or about February 5, 2021, Complainant was made aware of Respondent’s website located at the Disputed Domain Name Complainant contends that the Disputed Domain Name is confusingly similar to the BLOCKFI Mark in violation of paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name and Respondent’s website to which the Disputed Domain Name resolves incorporates the BLOCKFI Mark in its entirety throughout, as well as in combination with the word “capitals”, in referencing the cryptocurrency services purported to be offered by Respondent. Complainant further contends that Respondent entices unsuspecting Internet users to provide their personal information to Respondent under the guise that doing so will entitle them to a loan from Respondent of up to USD 1 million along with a “wealth insurance scheme”. Further on information and belief, Respondent is creating confusion or a false association with Complainant in order to operate a network marketing scheme whereby Internet users who create accounts with Respondent are invited to become representatives of the company and are promised substantial referral bonuses. Complainant further contends that an Internet search for passages of text found on Respondent’s website revealed a second website, “www.lionshare.me” which is a nearly word-for-word recreation of Respondent’s “www.blockficapital.org” website, including graphics and images, only rebranded as a different company, LionShare. On information and belief, the “www.lionshare.me” site is also owned and operated by Respondent which is also attempting to pass itself off as another cryptocurrency company, Lion’s Share, which is located at “www.lionsshare.io”. Lion’s Share has posted a disclaimer at the top of its website warning of third parties attempting to impersonate Lion’s Share through different domain names. Complainant alleges that the Disputed Domain Name was registered on December 4, 2020 well after Complainant first began using its BLOCKFI Mark, nearly a year after registration of the BLOCKFI Mark and more than five years after registration of Complainant’s own domain name Complainant further alleges that on February 10, 2021, Complainant’s representatives sent a cease and desist letter to Respondent which, as of the date of the filing of the First Amended Complaint, has not been acknowledged or responded to in any way by Respondent. Complainant further alleges that the Disputed Domain Name is confusingly similar to the BLOCKFI Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant contends that registration of the BLOCKFI Mark is prima facie evidence of the validity of the mark and establishes Complainant’s rights for purposes of the Policy. Complainant further alleges that the entirety of the BLOCKFI Mark is included in the Disputed Domain Name, with the addition of the generic term “capitals” and the non-distinctive generic Top-level Domain (“gTLD”) “.org”. Complainant further alleges that “capitals” is a commonly used term in the cryptocurrency and financial services industries and is synonymous with Complainant’s services. Thereby increasing the opportunity for confusion. Complainant asserts that Respondent lacks any rights or legitimate rights in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. First, Respondent is not affiliated with Complainant, nor has Respondent been authorized to use the BLOCKFI Mark or the BLOCKFI Logos in any manner. There is no evidence to suggest that Respondent, who has been identified by the Registrar as “Wes Fulford”, is commonly known by the Disputed Domain Name, or that Respondent was commonly or legitimately known as “blockfi” or “blockficatipals” or any variation thereof, prior to the registration of the Disputed Domain Name. Complainant further asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name, nor is Respondent making a bona fide offering of goods or services. Rather, by incorporating the BLOCKFI Mark in the Disputed Domain Name and throughout Respondent’s website, as well as using logos reminiscent of Complainant’s BLOCKFI Logos in connection with its website, it is clear that Respondent’s demonstrated purpose and use of the Disputed Domain Name is to confuse the public into believing that Respondent’s website, and its alleged cryptocurrency services, are associated with Complainant in order to benefit from this confusion. Such use cannot constitute a legitimate noncommercial or fair use of the Disputed Domain Name or a bona fide offering of goods or services. Complainant further asserts, on information and belief, that Respondent is capitalizing on the confusing similarity of the Disputed Domain Name to the BLOCKFI Mark in order to pass itself off as Complainant, seeking to benefit from Internet traffic intended for Complainant in order to operate what appears to be a phishing scheme. As discussed above, by using the BLOCKFI Mark in the Disputed Domain Name and further throughout the corresponding website, Respondent is impersonating Complainant, or someone acting under Complainant’s authority encouraging Internet users to connect their crypto-wallets to Respondent’s site under the guise that doing so will allow them to make transactions with quantified daily percentage returns, access to loans of up to USD 1 million, and in the case of Internet users who commit to be representatives for Respondent, referral bonuses. Such uses of the Disputed Domain Name, which are calculated to lure consumers to provide sensitive financial information, cannot constitute a bona fide offering of goods or services under the Policy. Complainant further asserts that Respondent has registered and is using the Disputed Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. Complainant alleges that Respondent is in violation of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy and has taken further action with respect to the Disputed Domain Name which constitute acts of Respondent’s bad faith. Complainant further asserts that the bad faith criteria set for in paragraph 4(b) of the Policy are non-exclusive and Respondent’s further actions with respect to the Disputed Domain Name signify bad faith on the part of the Respondent. Here Respondent’s actual knowledge of Complainant’s rights when it registered the Disputed Domain Name constitutes additional evidence of bad faith under the Policy. Complainant’s BLOCKFI Mark has no dictionary meaning, but rather is a term invented by Complainant and is therefore distinctive for Complainant’s corresponding services. As discussed above, Complainant has received numerous media references in relation to its operations and Complainant is active on high-profile social media platforms. As such, there is no plausible reason for Respondent to legitimately choose to use the term “blockfi” in connection with the generic industry term “capitals” incorporated with the BLOCKFI Mark and Logos in connection with its website and purport to offer services similar and related to Complainant’s own services other than bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the BLOCKFI Mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant owns the following U.S. Trademark Registration (the “BLOCKFI Mark”) BLOCKFI Registration No. 5989814 (February 18, 2020) for Classes 36 (banking services, namely, [proving] *providing* bank accounts for cryptocurrency; providing loans secured by cryptocurrency; financing loans for cryptocurrency investors; etc.) and 42 (non-downloadable computer software for use as a cryptocurrency wallet; etc.). Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the BLOCKFI Mark. Therefore, the Panel finds that Complainant has enforceable trademark rights for the purposes of this proceeding. Complainant further contends that the Disputed Domain Name is identical with or confusingly similar to the BLOCKFI Mark pursuant to paragraph 4(a)(i) of the Policy. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as (“.org”) may be disregarded for purposes of assessing confusing similarity. The Panel finds that the Disputed Domain Name contains the entirety of the BLOCKFI Mark, thus making it confusingly similar. The addition of the descriptive term “capitals” and the gTLD “.org” do not prevent the confusing similarity between the Disputed Domain Name and the BLOCKFI Mark. Therefore, Complainant has established the necessary criteria of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 BLOCKFI Mark. Complainant asserts that Respondent is not affiliated with Complainant, nor has Respondent been authorized to use the BLOCKFI Mark or the BLOCKFI Logos in any manner. There is no evidence to suggest that Respondent, who has been identified by the Registrar as “Wes Fulford”, is commonly known by the Disputed Domain Name, or that Respondent was commonly or legitimately known as “blockfi” or “blockficapitals” or any variation thereof, prior to the registration of the Disputed Domain Name. Complainant further asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name, nor is Respondent making a bona fide offering of goods or services. Rather, by incorporating the BLOCKFI Mark in the Disputed Domain Name and throughout Respondent’s website, as well as using logos reminiscent of Complainant’s BLOCKFI Logos in connection with its website, it is clear that Respondent’s demonstrated purpose and use of the Disputed Domain Name is to confuse the public into believing that Respondent’s website, and its alleged cryptocurrency services, are associated with Complainant in order to benefit from this confusion. Such use cannot constitute a legitimate noncommercial or fair use of the Disputed Domain Name or a bona fide offering of goods or services. Complainant further asserts that Respondent is capitalizing on the confusing similarity of the Disputed Domain Name to the BLOCKFI Mark in order to pass itself off as Complainant, seeking to benefit from Internet traffic intended for Complainant in order to operate what appears to be a phishing scheme. As discussed above, by using the BLOCKFI Mark in the Disputed Domain Name and further throughout the corresponding website, Respondent is impersonating Complainant, or someone acting under Complainant’s authority encouraging users to connect their crypto-wallets to Respondent’s site under the guise that doing so will allow them to make transactions with quantified daily percentage returns, access to loans of up to USD 1 million, and in the case of Internet users who commit to be representatives for Respondent, referral bonuses. Such uses of the Disputed Domain Name, which are calculated to lure consumers to provide sensitive financial information, cannot constitute a bona fide offering of goods or services under the Policy. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that Respondent has failed to rebut this showing. Therefore, Complainant has shown the necessary elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BLOCKFI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disuted Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the BLOCKFI Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the BLOCKFI Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. The four criteria set forth in the Policy, paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Complainant alleges that Respondent is in violation of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy and has taken further action with respect to the Disputed Domain Name which constitute acts of Respondent’s bad faith. Complainant contends that Respondent entices unsuspecting Internet users to provide their personal information to Respondent under the guise that doing so will entitle them to a loan from Respondent of up to USD 1 million along with a “wealth insurance scheme”. Further, Respondent is creating confusion or a false association with Complainant in order to operate a network marketing scheme whereby Internet users who create accounts with Respondent are invited to become representatives of the company and are promised substantial referral bonuses. Complainant further contends that an Internet search for passages of text found on Respondent’s website revealed a second website, Complainant alleges that the Disputed Domain Name was registered on December 4, 2020 well after Complainant first began using its BLOCKFI Mark, nearly a year after registration of the BLOCKFI Mark and more than five years after registration of Complainant’s own domain name The Panel finds that such activity is in violation of paragraph 4(b)(iv) of the Policy. Complainant further asserts that the bad faith criteria set for in paragraph 4(b) are nonexclusive and Respondent’s further actions with respect to the Disputed Domain Name signify bad faith on the part of the Respondent. Here Respondent’s actual knowledge of Complainant’s rights when it registered the Disputed Domain Name constitutes additional evidence of bad faith under the Policy. Complainant’s BLOCKFI Mark has no dictionary meaning, but rather is a term invented by Complainant and is therefore distinctive for Complainant’s corresponding services. As discussed above, Complainant has received numerous media references in relation to its operations and Complainant is active on high-profile social media platforms. As such, there is no plausible reason for Respondent to legitimately choose to use the term “blockfi” in connection with the generic industry term “capitals” incorporated with the BLOCKFI Mark and Logos in connection with its website and purport to offer services similar and related to Complainant’s own services other than bad faith. Further, Respondent’s website invites Internet users to register an account by providing personal information. Complainant asserts that Respondent may use the Disputed Domain Name to gather personal information for a potential phishing scheme. The Panel finds that this potential fraudulent activity may be an additional basis upon which to find that Respondent has acted in bad faith. Therefore, the Panel finds that Complainant has shown the elements of paragraph 4(a)(iii) 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 Richard W. Page
Sole Panelist
Date: May 14, 2021
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