ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION BlockFi Inc. v. WhoisSecure / Ali O. Case No. D2022-0834 1. The Parties The Complainant is BlockFi Inc., United States of America ("United States"), represented by Haynes and Boone, LLP, United States. The Respondent is WhoisSecure, United States / Ali O., Nigeria. 2. The Domain Name and Registrar The Disputed Domain Name is registered with OwnRegistrar, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2022. On March 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 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 March 25, 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 March 30, 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 March 31, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2022. The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 4, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration page 2 of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background According to the Complainant's undisputed allegations, it is a financial services company founded in 2017 and dedicated to building a bridge between cryptocurrencies and traditional financial and wealth management products. The Complainant's platform manages more than USD 2 billion in assets. Furthermore, the Disputed Domain Name was registered on July 6, 2021. The Complaint is based on United States Trademark Registration for BLOCKFI (verbal) no. 5989814, registered on February 18, 2020, for services in classes 36 and 42 and first use in commerce on January 12, 2018 (for services in class 36) and on January 22, 2019 (for services in class 42). It further results from the undisputed evidence provided by the Complainant that the Disputed Domain Name resolves to a website that purports to offer investment and cryptocurrency services (similar and related to those offered by the Complainant) and displays the term "SafeCryptoBlockfi" including the Complainant's BLOCKFI mark in the header of the landing page. 5. Parties' Contentions A. Complainant Firstly, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's mark. The Disputed Domain Name incorporates the Complainant's BLOCKFI mark in its entirety, with the addition of two suffixes, i.e. the dictionary term "safe" and the abbreviation for cryptocurrency "crypto", which is commonly used in the cryptocurrency industry. The Complainant, secondly, submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Respondent is neither affiliated with the Complainant nor has it been authorized to use the BLOCKFI mark in any manner. Moreover, the Respondent is not commonly known by the Disputed Domain Name. According to the Complainant, the Respondent is neither making a noncommercial fair use of the Disputed Domain Name, nor is the Respondent making a bona fide offering of goods or services. Rather, by incorporating the BLOCKFI mark in the Disputed Domain Name and throughout the Respondent's website it is clear that the Respondent's demonstrated purpose and use of the Disputed Domain Name is to confuse the public. Finally, the Respondent is capitalizing on the confusing similarity of the Disputed Domain Name to the Complainant's BLOCKFI mark in order to pass itself off as the Complainant. Thirdly, the Complainant contends that the Respondent registered and uses the Disputed Domain Name in bad faith. In its view, the Disputed Domain Name is intended to divert Internet users away from the Complainant's own website to the Respondent's website and therefore to disrupt the Complainant's business. Further, it is clear to the Complainant 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 mark in order to divert Internet users from the Complainant's legitimate site for the Respondent's own commercial gain. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Furthermore, paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should be transferred or cancelled: (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 Panel is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided, that the Complainant is the registered owner of United States trademark registration BLOCKFI (verbal) no. 5989814, of February 18, 2020. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark for purposes of the first element, where the relevant trademark is recognizable within the disputed domain name. Under such circumstances, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (cf. section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). This Panel shares the same view and notes that the Complainant's registered trademark BLOCKFI is included in full in the Disputed Domain Name and is recognizable therein. Furthermore, the combination of the trademark BLOCKFI with the elements "safe" and "crypto" as prefixes does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant's trademark. Finally, the generic Top-Level-Domain ("gTLD") ".com" is viewed as a standard registration requirement and is as such to be disregarded under the first element confusing similarity test (WIPO Overview 3.0 at section 1.11.1). In the light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the Disputed Domain Name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima page 4 facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name: According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent's use of the trademark BLOCKFI, e.g., by registering the Disputed Domain Name comprising said mark entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the Disputed Domain Name in the sense of paragraph 4(c)(ii) of the Policy. Finally, it results from the Complainant's undisputed allegations that the Disputed Domain Name resolves to a website that purports to offer investment and cryptocurrency services (similar and related to those offered by the Complainant) and displays the term "SafeCryptoBlockfi" including the Complainant's BLOCKFI mark in the header of the landing page. The Panel assesses this use as being commercial, so that it cannot be considered 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 pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use as described above cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In fact, this Panel considers that a registrant has no legitimate interest in a domain name that is similar to a third party's mark, where the composition of the domain name is associated to the business of the trademark holder, and that is being used to address consumers in the same business as the trademark holder operates (WIPO Overview 3.0 at section 2.5). Finally, previous UDRP panels have found that once the panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the respondent by using the disputed domain name, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. It results from the Complainant's documented allegations that the Disputed Domain Name is currently connected to a website that purports to offer investment and cryptocurrency services (similar and related to those offered by the Complainant) and displays the term "SafeCryptoBlockfi" including the Complainant's BLOCKFI mark in the header of the landing page. For the Panel, it is therefore evident that the Respondent positively knew the Complainant's BLOCKFI mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the Disputed Domain Name included the Complainant's trademark when it registered the Disputed Domain Name, having registered it due to its similarity with the Complainant's BLOCKFI mark. Registration of the Disputed Domain Name which contains a third party's mark, in awareness of said mark, to take advantage of its similarities with the mentioned mark, page 5 and in the absence of rights or legitimate interests amounts to registration in bad faith. The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are: (i) the Respondent's failure to submit a response; (ii) his failure to provide any evidence of actual or contemplated good-faith use; and (iii) the implausibility of any good faith use to which the Disputed Domain Name may be put. In the light of the above the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to 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, , be transferred to the Complainant. /Tobias Malte Müller/ Tobias Malte Müller Sole Panelist Date: May 18, 2022
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