The Complainant is Oxycoin B.V. of The Hague, the Netherlands, represented by BarentsKrans N.V., the Netherlands.
The Respondent is Peter Casey of Shirley, New York, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2019, 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 30, 2019, 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 February 4, 2019.
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 February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 6, 2019. 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 blockchain development company based in the Netherlands. The Complainant has issued an Initial Coin Offering (ICO) in 2017 for initial funding and initiated a crypto-token (OXY). It has also developed its own backend system (O.C.E.A.N.) to tackle security and legislation issues, and is developing an application (RONIN) for crypto-starters. The Complainant owns the registered Benelux trade mark for OXYCOIN, which was registered on September 25, 2017, with trade mark registration number 1017754. The Complainant offers its services under the trade name Oxycoin B.V. and under its OXYCOIN trade mark through various channels, including its website “”.
The Respondent is an individual based in the USA, who registered the Disputed Domain Name on November 3, 2018. The Disputed Domain Name was resolving to a website which was virtually identical to the Complainant’s official website, and currently resolves to a website displaying an error message. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Complainant owns the Benelux trade mark registration for OXYCOIN, which was registered on September 25, 2017. The Complainant offers its services under the trade name Oxycoin B.V. and under its OXYCOIN trade mark through various channels, such as its official website that can be accessed via its domain name . The Disputed Domain Name was registered by an individual in the USA on November 3, 2018. The Disputed Domain Name incorporates the Complainant’s OXYCOIN trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s OXYCOIN trade mark is the country code Top-Level Domain (“ccTLD”) extension “.co”. The website accessible via the Disputed Domain Name was previously virtually identical to the Complainant’s official website and also displayed the Complainant’s logo, official company registration number and contact details, and included pictures of the directors of the Complainant’s company. The Disputed Domain Name misled Internet users into believing that the Disputed Domain Name was authorised and owned by the Complainant, and that the website accessible via the Disputed Domain Name was an official website of the Complainant. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and he registered and is using the Disputed Domain Name in bad faith.
(b) The Complainant reported the abuse to the Registrar and the website at the Disputed Domain Name was suspended and is currently inaccessible.
(c) The Complainant has requested the transfer of the Disputed Domain Name in order to prevent further abuse of its trade mark through the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a 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 and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights in the OXYCOIN trade mark, based on its registration in Benelux. The OXYCOIN trade mark was first registered by the Complainant on September 25, 2017.
The Disputed Domain Name incorporates the entirety of the Complainant’s OXYCOIN trade mark. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the ccTLD, in this case “.co”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
In light of the above, the Panel finds that the Disputed Domain Name is identical to the Complainant's OXYCOIN trade mark, and paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the OXYCOIN trade mark in 2017, before the Disputed Domain Name was registered by the Respondent, and that the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark 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 trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that he has become commonly known by the Disputed Domain Name, or a name corresponding to it.
The website to which the Disputed Domain Name used to resolve was virtually identical to the Complainant's website, including in relation to layout and colour. It also incorporated the Complainant’s logo and references to the Complainant’s company registration number, contact details, and images of the Complainant’s company directors.
The Panel finds that the Respondent is not using the Disputed Domain Name to make a bona fide offering of goods or services, or for any purpose that amounts to legitimate noncommercial or fair use. From the evidence on record, the Panel finds that the Respondent is taking advantage of the reputation of the Complainant’s OXYCOIN mark in order to mislead Internet users into believing that the Disputed Domain Name and the website accessible via the Disputed Domain Name are affiliated with the Complainant.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has been using its OXYCOIN trade mark since 2017, i.e. for more than a year prior to the registration of the Disputed Domain Name. The website to which the Disputed Domain Name used to resolve was virtually identical to the Complainant’s official website, and prominently displayed and used the Complainant’s logo, and included references to the Complainant company’s registration number, contact details and images of the Complainant’s directors. The Respondent must have been aware of the Complainant at the time he registered the Disputed Domain Name, and sought to register and use the Disputed Domain Name in order to take advantage of the Complainant’s reputation and its well-known OXYCOIN mark to cause confusion and mislead Internet users.
As evidenced by the Complainant, the website at the Disputed Domain Name is currently inactive as a result of the Complainant’s report of the abuse to the Registrar.
In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name with the intent of misleading users into believing that the Disputed Domain Name and the website it resolves to, are associated with the Complainant, for commercial gain.
The Panel finds paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: March 20, 2019
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