The Complainant is BlockFi Inc., United States of America, represented by Haynes and Boone, LLP, United States of America.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Awverosuo Propser, Uganda.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2021. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2022, 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 January 5, 2022 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 January 5, 2022.
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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2022.
The Center appointed Theda König Horowicz as the sole panelist in this matter on February 14, 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 Delaware, United States of America (“U.S.”) in 2017 dedicated to building a bridge between cryptocurrencies and traditional financial and wealth managements products.
Since its creation, the Complainant has been referenced in several forms of media and is active in social media including Twitter, Facebook, and YouTube where it posts numerous videos and podcasts on blockchain technology, cryptocurrency, and wealth management.
The Complainant is the owner of the U.S. Registration No. 5989814 for BLOCKFI, in International Classes 36 and 42, registered on February 18, 2020.
The disputed domain name was registered on February 27, 2021. It was inactive at the time of the filing of the Complaint, but was previously resolving to a website purporting to offer wealth management and investment services, including in cryptocurrency. The website did also refer to services offered by “Blockfipro” encouraging users to sign up (including with their name, email address, phone number, a password, and photograph) in order to deposit funds with “Blockfipro” traders.
The disputed domain name currently resolves to a browser warning page about the risks to continue navigating on the said website in terms of the website connection not being private.
5. Parties’ Contentions A. ComplainantAccording to the Complainant, the disputed domain name is identical or confusingly similar to the Complainant’s BLOCKFI trademark. The disputed domain name incorporates the Complainant’s BLOCKFI trademark in its entirety with the addition of the generic term “pro” and the non-distinctive generic Top-Level Domain (“gTLD”) “.com”.
The Complainant further considers that numerous factors demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name for the following reasons:
(i) The Respondent is neither affiliated with the Complainant nor has the Respondent been authorized to use the BLOCKFI trademark in any manner.
(ii) There is no evidence to suggest that the Respondent is commonly known by the disputed domain name or that the Respondent was commonly or legitimately known as “blockfi” or “blockfipro” or any variation thereof.
(iii) When the infringing website was in use, it incorporated the BLOCKFI trademark in the disputed domain name and throughout the website. Thus, it was clear that the Respondent’s demonstrated purpose and use of the disputed domain name was to confuse the public into believing that the Respondent’s website and its alleged wealth management and investing services, including cryptocurrency, were associated with the Complainant in order to benefit from this confusion.
(iv) To the best of the Complainant’s knowledge, the Respondent was capitalizing on the confusing similarity of the disputed domain name to the Complainant’s BLOCKFI trademark in order 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.
(v) The Respondent’s use has tarnished and diluted the Complainant’s BLOCKFI trademark.
The Complainant finally asserts that the Respondent registered and is using the disputed domain name in bad faith. More specifically, the disputed domain name was intended to divert Internet users away from the Complainant’s own website to the Respondent’s website which purported to offer similar and related services to those of the Complainant with significant financial returns. By doing so, the Respondent was intentionally creating a false affiliation, and likelihood of confusion, with the Complainant and its BLOCKFI trademark for the Respondent’s own commercial gain. In addition, the BLOCKFI trademark is distinctive and was invented by the Complainant. The Complainant has been covered by the media in relation to its operations and is active in social media. The Respondent thus knew of the Complainant’s rights when registering the disputed domain name. Additionally, the Respondent’s use of the disputed domain name for a phishing scheme constitutes bad faith registration and use as well. The fact that the disputed domain name is currently inactive is not relevant as the website could be reinstated. Further, the Respondent has shielded its identity through the use of a privacy service.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in 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 SimilarThe Complainant showed to have trademark rights in BLOCKFI through a U.S. trademark registration.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Furthermore, according to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity.
The disputed domain name contains the BLOCKFI trademark in its entirety. The addition of the term “pro” in the disputed domain name does not prevent a confusing similarity, as the BLOCKFI trademark remains clearly recognizable in the disputed domain name.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests in the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “blockfi” or “blockfipro” or that a legitimate business would be run by the Respondent under the disputed domain name.
To the contrary, the Complainant has shown that:
(i) the disputed domain name was used in relation to a website extensively using the term “blockfipro” and alleging to be providing wealth management and investing services, including cryptocurrency, thus wrongly giving the impression to be associated with the Complainant, and
(ii) the website associated to the disputed domain name in the past did suggested to its users to sign up (including with their name, email address, phone number, a password, and photograph) in order to deposit funds with “Blockfipro” traders (phishing activity).
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademark and the descriptive term “pro”, associated with the Complainant’s financial services, carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel notes that the Complainant’s trademark BLOCKFI is a registered trademark and that it is widely used by the Complainant in social media. It is an invented word having a distinctive character in the field of services for which it has been registered by the Complainant.
A simple Internet search would have enabled the Respondent to identify that BLOCKFI is a protected brand in relation to the highly specific field of finances and cryptocurrency. The Respondent could thus not be unaware of the Complainant’s trademark when registering the disputed domain name.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see section 3.2.2 of the WIPO Overview 3.0). This finding is reinforced given the construction of the disputed domain name and the past use of the disputed domain name for a website purportedly dedicated to financial services, which are very similar to the services provided by the Complainant.
Furthermore, the Complainant has established that the Respondent’s intent in registering the disputed domain name was in fact to profit from or otherwise exploit the Complainant’s trademark because the website which was used in relation to the disputed domain name was set up in a way to create a likelihood of confusion with the Complainant, notably by widely using the term “blockfipro” on the said site, a term which insinuates a connection with Complainant’s business and BLOCKFI brand (see section 3.1.4 of the WIPO Overview 3.0).
The fact that the said website was also aiming to collect sensitive details of Internet users (phishing site) is another indication of bad faith use.
The Panel further notes that the Respondent has chosen not to respond, which is another indication of bad faith in the present circumstances, along with the use of a privacy service to mask its details.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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
Theda König Horowicz
Sole Panelist
Date: March 8, 2022