The Complainant is Yamana Gold, Inc., Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / kentb underhill, United States of America (“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 June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 23, 2021, 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 July 6, 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 amendment to the Complaint on July 7, 2021. The Center verified that the Complaint together with the amendment to 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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on September 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 Complainant is a Canadian company, founded in 1994, that is involved in the exploration and mining of gold, copper and minerals. In 2020, the Complainant generated over USD 2 billion in annual revenue. Since 2018 the Complainant has become involved in the blockchain and cryptocurrency space, launching a permissioned blockchain that tracks responsibly sourced gold from its origin to vault, creating a cryptocurrency token that is redeemable for physical gold. The Complainant is the owner of trademark registrations for marks consisting of the compound word YAMANAGOLD (the “YAMANAGOLD Mark”) in various jurisdictions including in a Canadian trademark registered on June 7, 2018 (registration number TMA998429) which has been used since 2003. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s YAMANAGOLD Mark; The Complainant is the owner of the YAMANAGOLD Mark, having registered the YAMANAGOLD Mark in Canada and other jurisdictions. The Domain Name is confusingly similar to the YAMANAGOLD Mark, merely adding the letter “s” to the otherwise wholly incorporated mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to phish for investors’ personal details and defraud these investors which is not a legitimate use. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website which offers cryptocurrency investments, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the YAMANAGOLD Mark, having a registration for the YAMANAGOLD Mark as a trademark in Canada and other jurisdictions such as the United States. The Domain Name wholly incorporates the YAMANAGOLD Mark with the addition of the letter “s” along with the Top-Level Domain (“TLD”) “.com”. A domain name which entirely reproduces the trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element, see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Domain Name is confusingly similar to the Complainant’s YAMANAGOLD Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the YAMANAGOLD Mark or a mark similar to the YAMANAGOLD Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. The Respondent’s use of the Domain Name to resolves to a webpage reproducing the Complainant’s YAMANAGOLD Mark and logo, offering cryptocurrency services that take advantage of the reputation the Complainant has acquired with its cryptocurrency offering does not, on the face of it, amount to use for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interests in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the YAMANAGOLD Mark at the time the Domain Name was registered. The Complainant had developed a reputation in the cryptocurrency space at the time the Domain Name was registered. The Respondent’s Website prominently reproduces the YAMANAGOLD Mark and logo while offering investment services relating to cryptocurrency. The Respondent does not provide, nor is it apparent to the Panel, any reason why an entity would register a domain name that wholly incorporates the YAMANAGOLD Mark and offer cryptocurrency services other than to take advantage of any confusion with the Complainant and its YAMANAGOLD Mark. The registration of the Domain Name in awareness of the YAMANAGOLD Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent’s Website purports to offer investment services that take advantage of the Complainant’s reputation in the cryptocurrency space. Given that the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the YAMANAGOLD Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such, the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name Nicholas Smith
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: September 2, 2021
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