The Complainant is is Binance Holdings Limited, Cayman Islands, represented by Ashurst, Australia.
The Respondent is Tell Media Pty Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to NetAlliance Pty Ltd trading as Netfleet.com.au a request for registrar verification in connection with the disputed domain name. On April 21, 2020, NetAlliance Pty Ltd trading as Netfleet.com.au transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 27, 2020. 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. On May 27, 2020, the Center received an email from the Respondent claiming it had received the Written Notice in the mail only the day before and requesting an extension of time in which to submit its response. After considering the request and the disruptions to communications resulting from the COVID-19 pandemic, the Panel issued Administrative Panel Order No. 1 granting to the Respondent until June 9, 2020, to file its Response. On June 9, 2020, the Respondent submitted its Response including a declaration of Rhys Nawodycz and exhibits RN-1 to RN-10. On June 12, 2020, the Complainant submitted a supplemental filing including Annexures A and B arising from the Response. On June 15, 2020, the Respondent replied to the Complainant’s supplemental filing, and on June 16, 2020, the Complainant filed another supplemental filing in response to the Respondent’s supplemental filing. 4. Factual Background The Complainant operates a worldwide cryptocurrency exchange service under the sign “Binance”. It has been doing so since at least June 22, 2017. Amongst other things, the Complainant conducts its business from the website at “www.binance.com”. It has accounts based on the sign “Binance” with Facebook and Twitter. According to its entry in Wikipedia, the Complainant was the largest cryptocurrency exchange in the world as of January 2018 in terms of trading volume. Its market capitalization is USD 1.3 billion. The Complainant is the owner of, amongst other things, Australian Registered Trade Mark No. 1970019, BINANCE, in respect of: “Class 9: Computer software, hardware and firmware; computer software and programs used in the field of electronic commerce; computer software and programs for processing electronic payments to and from others; authentication software; downloadable software applications; computer software packages; computer software for database management; computerised financial management information systems; computers; computer apparatus and equipment; telecommunication machines and apparatus; electronic devices; data processing equipment and devices; apparatus for recording, transmission or reproduction of sound or images; CD ROMS; DVDs; machine monitors; data terminals; data storage units; handheld currency converters; credit, debit, cash and identification cards; chip cards and smart cards; cash dispensers; electronic funds transfer machines; credit and debit card verification machines; electronic publications; downloadable computerised financial systems. “Class 35: Business management and business administration services; administration of consumer loyalty programs; business consultancy services; business data analysis; data processing; auctioneering; book-keeping; accounting; financial auditing; business information; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; business management and organisation consultancy; business research; commercial information and advice for consumers in the choice of products and services; competitive intelligence services; drawing up of statements of accounts; market intelligence services; collection of information for market research; negotiation and conclusion of commercial transactions for third parties; opinion polling; advertising and marketing services; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising services; providing business information via a web site; provision of an online marketplace for buyers and sellers of goods and services; retail and wholesale of goods, including online; public relations; tax preparation; the foregoing related to digital currency, cryptocurrency and currency trading. “Class 36: Financial services; banking; brokerage; brokerage of currency; buying and selling currency; exchange brokerage; capital investment; investments; financial clearing and financial clearing houses; deposits of valuables; electronic funds transfer; exchanging money; financial analysis; financial consultancy; financial advisory services; financial information; financing services; issuance of tokens of value; online banking; processing of financial transactions; processing of credit card payments; processing of debit card payments; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; safe deposit services; securities brokerage; stock brokerage services; stock exchange quotations; loans; monitoring of funds; monitoring of investments; investment research; economic and financial research; financial modelling; business appraisals for financial valuation; trading and exchange of bitcoins; buying, selling and exchange of trading currency; digital currency exchange services; trading of securities; dealing with digital tokens; the foregoing related to digital currency, cryptocurrency and currency trading.” This trade mark has been registered in Australia since November 21, 2018. On October 27, 2019, either the Respondent or its director, Mr. Nawodycz, registered the disputed domain name. WhoIS search results submitted with the Complaint show that Mr. Nawodycz was listed as the registrant as of February 12, 2020. However, the supplemental filing submitted by the Respondent includes a certificate from the Registrar stating that the Respondent has been the registrant since October 27, 2019. The Respondent operates a website from another domain name, “www.tellmedia.com.au”, from which it appears that the Respondent operates a digital marketing business providing services such as search engine optimisation, pay-per-click advertising, social media marketing, digital marketing consulting, website design and development, and “reputation marketing”. It appears from social media pages for the Respondent’s director, Mr. Nawodycz, that amongst other things he also holds an appointment at an organisation called “World Bookings” as a blockchain exchange researcher/decentralized exchange researcher where he has been involved in creating projects in “the blockchain and crypto space”. On February 10, 2020, a representative of the Complainant approached Mr. Nawodycz with an offer to buy the disputed domain name for USD 2,000. It appears (at least insofar as WhoIS records downloaded at those dates show) that at some point between February 12 and February 19, 2020, Mr. Nawodycz transferred the disputed domain name to the Respondent. Some further communications occurred between the Complainant and parties until, on March 9, 2020, the Complainant’s representative made an offer of AUD 8,000 indicating this was its final offer before proceedings to recover the disputed domain name were commenced. Up to this point, the disputed domain name had resolved to a website which was simply a parking page provided by the Registrar. On March 12, 2020, the Respondent filed an application to register an Australian trade mark, No. 2075327 for the word “binance” in International Class 39 for “flower delivery”. This application is held jointly with World Bookings pte ltd Singapore. Mr. Nawodycz is listed as a director and the only shareholder of this company. Its business profile in its return to the Accounting and Corporate Regulatory Authority in Singapore states its activities are management consultancy services and investment holding company. At some point between March 13 and March 17, 2020, the disputed domain name resolved to a webpage which featured an image of a flower and stated “Binance Flowers to Your Door. Under construction.” Currently, the disputed domain name resolves to a website, “Binancé Flowers”, which appears to operate as a florist, offering flowers for sale and delivery. It appears that the representation of “Binancé” with the accented “é” was introduced only after April 21, 2020. On April 21, 2020, the Complainant commenced proceedings in the Australian Trade Mark Office seeking to have the Respondent’s accepted trade mark application cancelled under section 92(4)(a) of the Trade Marks Act 1995 on the grounds that it was filed without an intention in good faith to use it as a trade mark. On April 26, 2020, the Respondent registered the business name “binance flowers”. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the 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 the Panel deems applicable. The Complainant has sought permission to file and rely on a supplemental filing. Under paragraph 12 of the Rules, the Panel, in its sole discretion, may request or permit such further statements. In exercising that power, the Panel must be mindful of the injunctions in paragraph 10(c) to ensure that the proceedings are conducted with due expedition and, in particular, paragraph 10(b ) to ensure that the parties are treated with equality and given a fair opportunity to present its case. The Complainant’s proposed supplemental filing is directed to responding to matters raised in the Response. The course adopted by the Complainant was entirely appropriate and, accordingly, the Panel admits the supplemental filing into the record in this proceeding. The Panel will also admit the Respondent’s subsequent supplemental filing as well although, arguably, it could have been part of the Response. In any event, for the reasons discussed below, neither it nor the Complainant’s second supplemental filing are determinative of the outcome of the proceeding. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark. The Complainant has proven that it owns the registered trade mark for BINANCE referred to in section 4 above. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade mark: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty LtdWIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy. As under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the suffix, “.com.au”, may be disregarded as a functional component of the domain name system: see auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.2. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s Trade Mark. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name: (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 trade mark 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 trade mark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001; auDRP Overview 1.0, section 2.1. It is not in dispute between the parties that there is no association between them and the Respondent does not have any licence from the Complainant to use the Complainant’s Trade Mark. The Complainant points out the Respondent’s business as indicated on its “www.tellmedia.com.au” website and the expertise of Mr. Nawodycz lie in the field of digital marketing, quite remote from the business of a florist. The Complainant further points out that the Respondent filed its trade mark application and put up a web page for a florist business “under construction” more than four months after Mr. Nawodycz registered the disputed domain name and only after the Complainant threatened to bring proceedings to recover the disputed domain name. The Complainant contends, therefore, that the Respondent is not genuinely operating, or intending to operate, as a florist from the disputed domain name. In its Response, the Respondent claims it initiated a business plan “in mid-2019” for an online offering providing flower arrangements and delivery of flowers. Exhibit RN-2 to the Mr. Nawodycz declaration is said to be the version of the business plan as it stood in October 2019. Mr. Nawodycz, the director of the Respondent, says he selected the disputed domain name from numerous lists of names being offered by the Registrar because the word “binancé” in French means “balanced” and “binancé flowers” in French translates as “paired flowers”. Mr. Nawodycz says he conducted a trade mark search which identified the Complainant’s Trade Mark before securing the disputed domain name, but the Respondent considered there was no overlap between flowers and the goods and services covered by the Complainant’s registered trade mark. The Respondent further says it set up website hosting on January 3, 2020, but the operating website did not commence until mid-March. It developed a mock up for the proposed website and some Facebook advertisements and created a Facebook Advertising account in February – March 2020, but did not start advertising because of low activity during the COVID-19 lockdown. The Complainant challenges this explanation in its supplemental filing. First, it points out that the business plan submitted by the Respondent and its list of expenditure incurred in relation to the website are both undated and could have been prepared at any time. Secondly, to the extent that the Respondent relies on COVID-19 for disruption of its plans, the Complainant points out that the pandemic was unknown and did not exist in Australia in October 2019. Thirdly, for all the Respondent’s emphasis on the significance or importance of the accented “é”, none of the disputed domain name, the Respondent’s trade mark application, nor its website represented “binance” in that way until the Complainant lodged its non-use application on April 21, 2020. It was only after that date that the Respondent’s website represented the term with the accented “é”. Fourthly, the Complainant points out that some of the images of products apparently offered for sale on the Respondent’s website appear to have been copied from unrelated websites. For example, the Respondent’s website offers the “Ostrich Feather Bouquet” at a price of AUD 99.00 (down from AUD 205) while the same product (using the same image) was offered for sale on eBay by “feathermatters” for AUD 29. Similarly, the “Pink Pampas” bouquet apparently offered for sale on the Respondent’s website for AUD 119.50 (down from AUD 319) is being advertised for sale on Etsy for AUD 30 by “COCOMUMUflowers” using the same image. Accordingly, the Complainant contends that the Respondent is not operating a genuine flower delivery business. Aside from copying images from other sites, the Complainant contends the Respondent appears to be offering products for sale at a price aimed to ensure it does not receive any genuine orders. The Complainant also contends that Mr. Nawodycz did not satisfy the registrant registrability criteria when he registered the disputed domain name. At that time, he did not hold a trade mark or trade mark application or business name from which “binance” (or “binancé”) could be appropriately derived. See 2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs, Schedule C, paragraph 2 (“Eligibility Policy Rules”). Taking the eligibility issue first, strictly speaking the issue is whether the Respondent satisfied the eligibility criteria when it became the registrant. The close connection between Mr. Nawodycz and the Respondent could displace the usual rule. Also, as noted above, the Respondent challenges the allegation that Mr. Nawodycz, and not it, became the registrant on October 27, 2019. On the record in this case, however, the date the Respondent became the registrant does not resolve the issue. Apart from anything else, neither the trade mark application nor the business name registration had been made by February 19, 2020 (at the latest) let alone even earlier on October 27, 2019. As explained below, therefore, the Respondent can be in no better position at the earlier date than the later date. Under paragraph 2 of the applicable Eligibility Policy Rules: “Domain names in the com.au 2LD must be: “a) an exact match, abbreviation or acronym of the registrant’s name or trademark; or “b) otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs.” The criteria in sub-paragraph a) were not satisfied at the time of registration of the disputed domain name by either Mr. Nawodycz or the Respondent. The Guidelines on the Interpretation of Policy Rules for the Open 2LDs explain the “close and substantial connection” requirement in section 10 as follows: “10.5 In com.au and net.au, the categories of close and substantial connection are: “a) a product that the registrant manufactures or sells; or “b) a service that the registrant provides; or “c) an event that the registrant organises or sponsors; or “d) an activity that the registrant facilitates, teaches or trains; or “e) a venue that the registrant operates; or “f) a profession that the registrant's employees practise. “It is also permissible, under the close and substantial connection rule, to register a com.au or net.au domain name for the purpose of domain monetisation – refer to section 11 below.” The basis on which either Mr. Nawodycz or the Respondent actually claimed to satisfy the eligibility requirements is not clear on the record in this case. The Panel notes, however, that the Respondent’s claim to be operating a flower delivery service (which through Mr. Nawodycz is claimed to go back to October 2019) would appear to meet the requirement of paragraph 10.5(b) above. That gives rise to the same issue as raised by the Complainant’s first challenge: whether or not the Respondent used, or had made demonstrable preparations to use, the disputed domain name in connection with an offering of goods or services in good faith. The Panel accepts that the matters raised by the Complainant at the least raise suspicions about the Respondent’s bona fides. The Respondent’s explanations for at least some of the matters raised by the Complainant are not necessarily consistent or convincing. Nonetheless, the onus lies on the Complainant to establish on the balance of probabilities, or a preponderance of the evidence, that the Respondent is not offering goods or services in good faith. The Panel is also mindful that there are other proceedings on foot in which the credit of the Respondent will clearly be in question, and where the procedures permit a much more detailed forensic examination of the Respondent’s actions and motivations than is possible in an administrative proceeding of the limited nature of the present proceeding. The Respondent has admitted knowledge of the Complainant’s Trade Mark as a result of trade mark searches Mr. Nawodycz undertook before registering the disputed domain name. His claim that he did not think the intended use for a flower delivery service would not overlap with the Complainant’s rights is not, on its face, implausible or untenable. The Panel also notes that the expression “binancé flowers”, which the Respondent says translates into English as “paired flowers”, is not actually a French expression. Google Translate does, however, offer that translation as a translation from French to English. As the Complainant points out, the business plan and the schedule of “expenditures on average” submitted by the Respondent are undated and could have been created at any time. Mr. Nawodycz, however, has stated in his declaration that the form of documents submitted is the form they took back in October 2019. It is not entirely clear to the Panel that the declaration has been executed properly. It has been submitted, however, by a firm of Patent and Trade Mark Attorneys and has been presented in the form used for making declarations before the Commissioner of Patents and the Registrar of Trade Marks. It has clearly been submitted with the intention of conveying it has been prepared mindful of the consequences of making a false declaration. Making a false declaration is a criminal offence punishable by imprisonment: up to four years under the Statutory Declarations Act 1959 (Commonwealth) and five years under the Oaths Act 1900 (New South Wales). The fact that Mr. Nawodycz has asserted the business plan and “expenditures on average” documents submitted are in the form they took in October 2019 is not necessarily conclusive of those facts. The Panel would not necessarily be bound to accept the assertion for example if it were inconsistent with other objective evidence. In proceedings such as the present where there is no cross-examination or discovery, however, it must be given weight and cannot be simply dismissed. One might question why a digital marketing business might wish to diversify into a flower delivery business. The possibility cannot be simply dismissed. Moreover, to all intents in purposes, the Respondent does appear to be attempting to operate such a business from the website to which the disputed domain name resolves. There is no evidence before the Panel that the Respondent’s website is not operational. Noting that there was no (known) pandemic in October 2019, the Panel does not consider that a period of some five to six months for a website for a new business to be up and running is unreasonable or indicative of lack of good faith in itself. The Panel is mindful of the meme, “On the Internet, nobody knows you’re a dog”.1 On the record in this proceeding, however, the Respondent’s website has not been shown to be a mere pretext or a sham or non-operational. In these circumstances, the limited nature of a proceeding under the auDRP with no discovery nor cross-examination is not well suited to forming a conclusion about the Respondent’s real motives which, having regard to the nature of the dispute, indicate this case is better suited to resolution in court proceedings. Given the difference between a flower delivery service and the services provided by the Complainant and the goods and services included within the Complainant’s Trade Mark, therefore, the Panel finds with considerable hesitation that the Complainant has not discharged its onus of demonstrating the Respondent does not have rights or a legitimate interest in the disputed domain name. C. Registered or Subsequently Used in Bad Faith In view of the conclusion reached in relation to the second element and the pending proceedings in the Australian Trade Mark Office, no good purpose would be served by addressing this requirement at this stage. 6. Decision For all the foregoing reasons, the Complaint is denied. Warwick A. Rothnie 1 First attributed to the cartoon drawn by Peter Steiner and published by The New Yorker on July 5, 1993.
Sole Panelist
Date: June 17, 2020
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