The Complainant is BlockFi Inc., United States of America (“United States”), represented by Haynes and Boone, LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Stanley Empathy, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 the Complainant on October 26, 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 October 30, 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 November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 6, 2022. 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 BackgroundThe Complainant is a financial services company founded in 2017 active in the cryptocurrencies market.
It is the owner of the domain name
The disputed domain name was registered on April 23, 2021, and was used in connection with cryptocurrency services similar and related to those of the Complainant. Presently, no active webpage resolves from the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant asserts to be a financial services company founded in 2017, presently managing more than USD 2 billion in assets and being backed by industry-leading investors including Valar Ventures, Morgan Creek Capital Management, Coinbase Ventures, Galaxy Digital, Susquehanna Government Products, and Winklevoss Capital.
According to the Complainant, the disputed domain name
Under the Complainant’s view the disputed domain name incorporates the Complainant’s BLOCKFI trademark in its entirety, with the addition of the generic term “trade”, which is commonly used in the in the cryptocurrency and financial services industries, thereby further facilitating confusion.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent is neither affiliated with the Complainant nor been authorized to use the BLOCKFI trademark in any manner;
(ii) the Respondent is not commonly known by the disputed domain name;
(iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that the use made of disputed domain name seeks to confuse the public into believing that the Respondent’s website, and its alleged cryptocurrency services, are associated with the Complainant in order to benefit from this confusion; and
(iv) the Respondent has used the disputed domain name to pass itself off as the Complainant, seeking to benefit from Internet traffic intended for the Complainant in order to operate what appears to be a phishing scheme, encouraging users to connect their crypto-wallets to the Respondent’s website under the guise that doing so will allow them to join the “qualified members of blockfi-trade.com”, and, in the case of Internet users who refer the Respondent to others, to receive a 10 % referral commission, what may tarnish the Complainant’s trademark.
As to the registration and use of the disputed domain name in bad faith the Complainant states that:
(i) the disputed domain name is intended to divert Internet users away from the Complainant’s own website to the Respondent’s website – which purports to offer similar and related services to those of the Complainant with significant financial returns – thereby disrupting the Complainant’s business;
(ii) the Respondent’s use of the disputed domain name indicates that the Respondent registered and is using the disputed domain name to intentionally create a false affiliation, and likelihood of confusion, with the Complainant and its BLOCKFI trademark in order to divert Internet users from the Complainant’s legitimate site for the Respondent’s own commercial gain;
(iii) the Respondent, by registering the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's BLOCKFI trademark as to the source, sponsorship, affiliation, or endorsement of its website, pursuant to paragraph 4(b)(iv) of the Policy; and
(iv) the Respondent’s choice to retain a privacy service to shield its identity may also be considered an additional indicator of the Respondent’s bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the BLOCKFI trademark.
The disputed domain name identically reproduces the Complainant’s BLOCKFI trademark in its entirety. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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, in spite of not having acquired 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and neither is there a connection or affiliation between the Complainant and the Respondent. Also, the Complainant indeed states that the Respondent has not been authorized to use the BLOCKFI trademark in any manner.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name, in connection with a webpage that offered similar and related services to those of the Complainant and sought to obtain Internet users’ sensitive information suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s prior registered BLOCKFI trademark in its entirety in the disputed domain name, as well as the use of the disputed domain name in connection with a webpage offering similar and related services to those of the Complainant, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
Moreover, the Respondent’s attempt to collect Internet users’ sensitive data through the webpage that resolved from the disputed domain name, coupled with the Respondent’s lack of provision of no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, not having submitted a response, further corroborates the Respondent’s bad faith.
Three additional factors further reinforce the indication of the Respondent’s bad faith:
a) the choice to retain a privacy protection service to conceal the Respondent’s true identity;
b) the present inactive use of the disputed domain name, which itself does not prevent a finding of bad faith pursuant to section 3.3 of the WIPO Overview 3.0 and the circumstances in this proceeding; and
c) the indication of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: January 20, 2022