The Complainants are GSB Gold Standard Banking Corporation AG, Germany and Josip Heit, Germany, represented by Irle Moser Rechtsanwalte, Germany.
The Respondent is Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd, Bulgaria. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2021 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 May 19, 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 the Respondent of the Complaint, and the proceedings commenced on May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. On May 26 and 31, 2021, the Center received communications from a third party who was named as a potential respondent in the Complaint. In response to the latter, the Complainant submitted a supplemental filing on June 4, 2021. Further communication was received from the same third-party on June 8, 2021, following which an email communication was received on the same day from an email address using the disputed domain name The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 1, 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. 4. Factual Background The Complainants are GSB Gold Standard Banking Corporation AG (“GSB”) and Josip Heit. The latter is the chairman of the board of the former and acts as its brand ambassador. Both of the Complainants are engaged in the blockchain services market and their products include white-labeled and customizable software solutions, trading modules, platforms, and signal/data streams. These products are provided to the financial sector. The Complainants also offer a cryptocurrency named “G999” and gold trading services. The disputed domain names were registered on the following dates: The disputed domain name The Complainant contends as follows: Identical or confusingly similar The Complainant claims rights in the unregistered trademark JOSIP HEIT as a representative trademark for the activities of the Complainant. There is a strong link between GSB and such mark, which is the face of the brand. The mark JOSIP HEIT has achieved secondary meaning because of its perception by end customers and by the media. The mark is also protected as a corporate identifier under German national law and the Complainant Mr. Heit can also demand a remedy for misuse of his name under the German Civil Code. The manner in which the mark is used by the Respondent in connection with criticism of GSB underlines the fact that it is seen as synonymous with the Complainant company. The disputed domain names contain the mark in its entirety, and the lack of spaces or the addition of the word “scam” do not obviate identity with the Complainant’s trademark rights, particularly as the disputed domain names are not used in a noncommercial manner. Rights or legitimate interests No rights or legitimate interests of the Respondent are apparent from the way that the web pages are used or from the information provided by the Registrar, which tends to suggest that the Respondent is attempting to disguise itself. The Complainant has issued no licenses for the JOSIP HEIT mark and is unaware of any other person holding rights to this name. The websites associated with the disputed domain names Registered and used in bad faith The disputed domain names were registered primarily for the purpose of disrupting the business of the Complainant. The Respondent had knowledge of the Complainant’s rights in the JOSIP HEIT mark at the point of registration due to the nature of the disputed domain names and because the content of the associated website with The Respondent did not reply to the Complainant’s contentions by way of a formal Response. Three emails were received from a person who may have access to an email address associated with the disputed domain name and who also appears to have been named in court proceedings at the instance of the Complainant. However, while this person made various comments regarding the substance of the Complaint, he denied that he had any involvement with the web pages associated with the disputed domain names or that he knew of either of the Complainants. As discussed further below, the Complainants did not show a sufficient link between this person and the registrant of the disputed domain names. As such, this person’s contentions will not be treated as contentions of the Respondent and the Panel does not consider them to be relevant to this proceeding. A further email was received from an email address associated with the disputed domain name The Respondent contends as follows: The Complainant will defend interference with its property in court. There is no JOSIP HEIT trademark. The Complainant has no reasonable and legal claim. There is no criminal investigation against the Respondent. The proceeding is solely for the purpose of harassment, intimidation, and threat. Among other things, the Complainant Mr. Heit has made death threats to alleged employees of the website at the disputed domain name To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. A. Preliminary Issue: Consolidation of Complainants The present Complaint has been filed by two Complainants. The Complainants do not however expressly request consolidation of their respective complaints, nor do they provide any submissions on the topic. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides inter alia as follows: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” Considering the Complaint as a whole, it appears to the Panel that the Complainants have shared interests regarding the disputed domain names. These feature the personal name of the second Complainant, who is also the Chairman of the first Complainant. Due to the nature of the first Complainant’s business, which makes heavy reliance on the name and personality of the second Complainant, who is the driving force behind the first Complainant, it is likely that any targeting of one of the Complainants is likely to affect the other. In these circumstances, it appears to the Panel that the Complainants have a common grievance in this case. The publication of the original website content associated with one of the disputed domain names, The Panel determines that the Complainants’ respective complaints against the Respondent in this case will be consolidated. Unless otherwise specified, the Panel will refer to the Complainants jointly throughout the remainder of this decision as “the Complainant”. B. Preliminary Issue: Identity of the Respondent The UDRP Rules define the respondent as “the holder of a domain name registration against which a complaint is initiated”. In this case, the registrant of the disputed domain names as disclosed by the Registrar is an entity named Cloud DNS Ltd with an address in Bulgaria. Although the Complaint names a third party as a possible respondent, and that party has issued three emails to the Center, said third party has denied having anything to do with the disputed domain names. The Complainant states that it “cannot say with certainty whether this person is actually the owner of the domains”. As far as the Panel is concerned, insufficient evidence has been provided to link said third party to the disputed domain names whereby the Panel would consider it to be the holder in terms of the Rules. Accordingly, the Panel determines that the identity of the Respondent is Cloud DNS Ltd. The three emails from the third party to the Center will be disregarded. As noted in the section relating to the Respondent’s contentions above, an email which bears to be from the “Staff and Editorial Office” at the website “www.josipheit.com”, and which appears to be sent from an email address at the disputed domain name The Complainant made an unsolicited supplemental filing which sought to respond to various issues raised by the third party in its three emails to the Center. Section 4.6 of the WIPO Overview 3.0 states inter alia “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel…. [P]anels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party.” In the present case, as the third party’s emails have not been admitted, and the Complainant’s supplemental filing contains a reply to these, there is no need for the Panel to admit such supplemental filing. D. Preliminary Issue: Respondent’s informal Response The Respondent has not filed a formal Response but its email of June 8, 2021 makes various contentions as noted above. The Panel will treat this as an informal Response. While such informal Response seeks to respond to various statements and allegations contained in the Complaint, in accordance with paragraph 5(c)(i) of the Rules, it lacks the requisite certification as to completeness and accuracy in accordance with paragraph 5(c)(viii) of the Rules. Due to the absence of such certification, the Panel will treat any material statements of fact which arise exclusively from the Response with a degree of caution. E. Preliminary Issue: Effect of Court Proceedings The Complainant indicated that it has commenced proceedings in a German court against the third party which it named in the Complaint and produced an order granted by the court relative to the disputed domain name In terms of paragraph 18(a) of the Rules, the Panel has discretion to suspend, terminate or continue a proceeding under the Policy where a domain name dispute that is the subject of the Complaint is also the subject of other pending legal proceedings. In the present case, the Panel has already determined that the third party will not be treated as the Respondent for the reasons outlined above. Neither of the Parties has requested the present proceeding to be suspended or terminated as a consequence of the court proceedings. In these circumstances, the Panel will continue the present administrative proceeding and will reach a Decision under the Policy. F. Identical or Confusingly Similar Under this element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar thereto. The Complaint notes that neither of the Complainants has any registered rights in the mark JOSIP HEIT. Instead, the Complainant claims unregistered trademark rights therein on the basis that such mark is used as a synonym for the Complainant’s blockchain services, and that the association between the Complainant GSB and Mr. Heit is familiar to the related industry. In terms of its use as a trademark, rather than as a personal name, the Complainant contends that JOSIP HEIT has been continuously used in connection with GSB’s services since Mr. Heit joined the board of directors of GSB on January 2, 2018. Section 1.5.2 of the WIPO Overview 3.0 deals with the situation where a complainant claims UDRP-relevant rights in a personal name. It notes that merely having a famous name, or making broad unsupported allegations regarding the use of such name in trade or commerce would not likely demonstrate unregistered rights for the purpose of standing to file a complaint under the Policy. However, the section also describes a consensus view among panels under the Policy that if a personal name is being used as a trademark-like identifier in trade or commerce, a complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case provided that the name in question is a distinctive identifier of the complainant’s goods or services. Here, the Complainant’s allegations are supported by a series of what are described as “research findings” which are said to contain evidence of the perception of the JOSIP HEIT trademark by third parties. There are twelve of these articles in total, most of which have been presented in the German language and have not been translated into the language of the administrative proceeding. The Panel has been able to identify the majority of these online in order to carry out a machine translation. Such translations indicate that the articles are largely reproductions of press releases ultimately emanating from the Complainant GSB. They are therefore of limited value in assessing how the relevant public sees the Complainant and the alleged mark JOSIP HEIT. Nevertheless, despite the fact that these are for the most part self-generated, they do show that the Complainant itself invariably presents GSB and Mr. Josip Heit together to the marketplace for crypto-currencies and certain commodities and that Mr. Heit’s name and persona is a highly prominent element of the Complainant’s multi-faceted public relations campaigns. In effect, GSB presents Mr. Heit to the marketplace as a “financial guru” whereby its offerings are intrinsically linked to the name of their creator. It could therefore be argued that Mr. Heit’s personal name is being used as a distinctive identifier of the Complainant’s services, although on the basis of this evidence alone, it is not possible to identify any perception of the alleged JOSIP HEIT trademark by third parties. In addition to the “research findings” evidence, however, the Complainant also produces its channel page on the video streaming portal “www.youtube.com” which features videos that have garnered over 85,000 views. Based upon their titles and apparent content, these videos provide additional support for the notion that GSB and Mr. Josip Heit have been presented together to the financial marketplaces in which they operate in connection with GSB’s goods and services. However, more importantly for present purposes, the volume of views suggests that the pairing of Mr. Heit and GSB is followed by a substantial community. It is therefore reasonable to infer that the relevant community would be likely to identify this particular individual with his company, and that the relevant media and sections of the public would consider Mr. Heit to be the alter ego and driving force behind GSB. In these circumstances, it is likely that the company has an interest in protecting the individual’s name for commercial use (on these aspects, see the discussion in Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068). Had it not been for the volume of views on the Complainant’s “www.youtube.com” channel, the Panel would have hesitated to find that the Complainant has rights in Mr. Heit’s personal name on the strength of the other evidence presented, namely the Complainant’s largely self-generated content. Even if the Complainant’s press releases are wholly consistent in their apparent presentation of Mr. Heit and GSB, this does not on its own tell the Panel how, if at all, the Complainant is perceived by “the relevant commercial community” in the wording of Chung, Mong Koo and Hyundai Motor Company v. Individual, supra. It does not demonstrate that Mr. Heit’s name has become a distinctive identifier which consumers associate with the complainant’s goods and services. In this connection, the apparent dissemination of the series of press releases which have been produced in this case is not of the same evidential quality as actual media coverage of the alleged mark by third party news outlets. On the other hand, the substantial volume of views of the Complainant’s videos suggests that the relevant population have seen and thus are aware of GSB’s active promotion of Mr Heit’s name and identity in the context of GSB’s goods and services. The Panel also notes the fact that the registration of the disputed domain names suggests that very same awareness in the mind of the Respondent. In all of these circumstances, the Panel finds that the Complainant has rights in the unregistered mark JOSIP HEIT for the purposes of the present proceeding. It should be noted for completeness that the Respondent did not mount any substantive challenge to the Complainant’s submissions on this topic, merely asserting without evidence or any further elaboration that “there is no trademark Josip Heit”. The Panel therefore turns to a comparison between the Complainant’s said mark and the disputed domain names. In the case of the first three disputed domain names, it is clear that the second level of each of these is identical to the mark, absent a space which cannot be reproduced in a domain name for technical reasons. The same applies to the last disputed domain name, although it also contains an additional word “scam”. This word does prevent a finding of confusing similarity between the disputed domain name and the mark, which remains clearly recognizable in the disputed domain name. Said mark is similarly recognizable in its unadorned form in the other disputed domain names. In these circumstances, the Panel finds that the Complainant has proved that it has rights in a trademark and that the disputed domain names are confusingly similar to such mark. The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied. G. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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”. In the present case, although the Respondent does not expressly assert its rights or legitimate interests in the disputed domain names in the Response with reference to the Policy, its original use of the first disputed domain name to publish material which is critical of the Complainant might be said to demonstrate rights and legitimate interests in terms of paragraph 4(c)(iii) of the Policy. In order to support fair use under this paragraph, a respondent’s criticism must be genuine and noncommercial, and may not be primarily a pretext for cybersquatting, commercial activity, or tarnishment. Here, there are at least undertones of commercial activity in the form of the merchandise which was offered on the website associated with the first disputed domain name. As far as the Panel can tell, none of the merchandise set out on the original site was actually offered for sale. It appears that the Respondent may have been offering such merchandise on a gratuitous basis in return for “tip-offs” regarding the Complainant’s alleged wrongdoing, therefore arguably retaining a noncommercial status. However, the position is not exactly clear-cut and it is of some significance that the Respondent has not addressed itself to the Complainant’s direct challenge that its website was engaged in commercial use. Turning to the question of whether the criticism of the Complainant is genuine, and not a pretext for cybersquatting or tarnishment of the Complainant’s mark, the presence of Mr. Heit’s image along with digitally-added Nazi iconography within the Respondent’s original content strikes the Panel as similar in some respects to those previous cases under the Policy where a complainant’s mark, itself unrelated to the adult entertainment industry, has been pointed to pornographic content with a view to tarnishing the mark concerned (see, for example, Caesars World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513 and the cases cited therein). In addition to this apparent tarnishment, it must also be noted that the Complainant asserts that the Respondent’s various statements are false and defamatory and, while the Respondent states that it will defend itself in court, it does not seek to defend its content in the present proceeding, for example on the basis that its allegations are true or on the basis of typical freedom of speech arguments. In all of these circumstances, and in particular, given Respondent’s failure to put forward any argument that it is engaged in the making of genuine noncommercial criticism of the Complainant, the Panel finds that the Complainant has met its burden under the Policy and that the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied. H. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. In the discussion in the previous section, the Panel found that certain content at the original website for the first disputed domain name appeared to be a pretext for cybersquatting or tarnishment of the Complainant’s mark as opposed to the genuine exercise of freedom of speech to criticize the Complainant and its activities. Such conduct has formed a basis for a finding of registration and use in bad faith in previous cases under the Policy, such as those cases where a respondent has intentionally pointed a domain name containing a complainant’s trademark to pornographic content, as discussed in the preceding section. Despite being given an opportunity to discuss its motivation and intent for publishing the content at the first disputed domain name, the Respondent did not directly address the bulk of the Complainant’s contentions. The Complainant asserted that the material appearing on the Respondent’s website was false and defamatory. The Respondent did not seek to argue that such material constituted genuine (let alone noncommerical) criticism of the Complainant and thus that the disputed domain names had been registered and used for a good faith purpose. In any event, had it done so, the Panel would not necessarily have accepted that argument due to its doubts as already expressed and due to the exact matching nature of all but one of the disputed domain names to the relevant mark. In all of these circumstances, the Panel finds on the balance of probabilities that the Respondent has registered and is using the disputed domain names in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been satisfied. The Respondent has indicated that it will seek to become involved in the court proceedings raised by the Complainant against the third party. Paragraph 4(k) of the Policy provides that neither of the Parties is prevented from submitting the dispute to a court of competent jurisdiction for independent resolution either before or after this proceeding is concluded. In that context, the Panel notes that along similar lines to the comments of the panel in Navista S.A. v. Virtual Point Inc. dba CrossPath, It Manager,WIPO Case No. D2012-1157, the Panel entertains no notion of what may be done with the present Decision after the Panel is functus officio and does not address this to the attention of any other forum. 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 names Andrew D. S. Lothian
Uncontested evidence has been produced indicating that the Complainant, Josip Heit, is an entrepreneur whose business activities in the field of commodities trading and blockchain, including his promotion of the activities of GSB, receive media coverage. The Complainants maintain that Mr. Heit’s said promotional activities are substantial and that, as a consequence, he is seen as synonymous with and indistinguishable from GSB in the eyes of the relevant marketplace. In these circumstances, the Complainants have asserted that the Complainant GSB has unregistered trademark rights in the mark JOSIP HEIT, which it has continuously used in commerce since January 2, 2018 as an identifier of the Complainants’ products to the customer.
In any event, panels under the Policy tend to find that a general right to legitimate criticism does not necessarily extend to registering or using a domain name which is identical to a trademark, as it is in the case of the first three disputed domain names in this matter. Even if such mark had been used in connection with genuine noncommercial criticism, the Panel would have found that the Respondent’s right to exercise freedom of speech does not necessarily extend to a right to impersonate the Complainant by the adoption of its mark identically in the second level of a domain name. The fourth disputed domain name adds the word “scam” which might be said to signal to the intended viewer that the content is critical of the Complainant. Nevertheless, this domain name has never been configured for any such use and, even if it had been, the Panel has doubts as discussed above over the nature of the content originally published at the single disputed domain name which was so configured.
Sole Panelist
Date: July 19, 2020
Full & Egal Universal Law Academy