The Complainants are Arizen and Coinhouse of Paris, France (subsequently referred as "Complainants"), represented by Beylouni Carbasse Guény Valot Vernet A.A.R.P.I, France.
The Respondent is Tim Bloksdam of Utrecht, Netherlands. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name (the "Disputed Domain Name") is the European Registry for Internet Domains ("EURid" or the "Registry"). The Registrar of the Disputed Domain Name is eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the "ADR Rules") and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the "Supplemental Rules").
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 22, 2018. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainants, Arizen ("First Complainant") and Coinhouse ("Second Complainant"), are companies established in France active in the field of computer programming, notably related to bitcoins and other cryptocurrencies. The Complainants are specifically known for operating an online bitcoin exchange platform. According to the certificate of incorporation, the First Complainant is the principal and legal representative of the Second Complainant. Additionally, both companies are established at the same location and offer associated services to the same customers.
The First Complainant, Arizen, was registered as a joint-stock company in France on October 6, 2017 and is currently the holder of several domain names including the term "coinhouse", notably , registered on December 18, 2000; , registered on January 9, 2014; and , registered on January 9, 2014.
The First Complainant is the holder of, inter alia, the following French trademark application:
- , combined trademark application filed with the French National Institute for Intellectual Property ("INPI") under No. 4401191 on November 2, 2017 in classes 9, 35, 36, 38, 39, 41, 42 and 45;
For this trademark application, the First Complainant has not yet obtained the registration of the trademark.
The Second Complainant, Coinhouse, was registered as a joint-stock company in France on December 14, 2015 under the company name COINHOUSE. The Second Complainant is the joint operator of the websites connected to the domain names , and .
The Disputed Domain Name, , was registered by the Respondent on March 26, 2017. The Disputed Domain Name resolves to a website offering cryptocurrency exchange services on a digital platform similar to that of the Complainants.
On January 17, 2018, the First Complainant sent a formal cease and desist notice to the Respondent via email and registered mail demanding Respondent to immediately cease and desist from any further use and apply for the cancellation or transfer of the Disputed Domain Name. The Respondent did not reply to this notice as both the provided email address and postal address in the WhoIs records appeared incorrect. 5. Parties' Contentions A. Complainants
The Complainants consider the Disputed Domain Name to be identical to a trademark in which they claim to have rights.The Complainants further claim that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.According to the Complainants, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainants, the Respondent has not been commonly known by the Disputed Domain Name and was not authorized by the Complainants to operate a confusingly similar website offering similar services under the same name. The Complainants further claim that the Respondent deliberately concealed its identity and provided false contact information in the WhoIs records.Finally, the Complainants claim that the Disputed Domain Name is also being used in bad faith. The Complainants contend that the Respondent has intentionally used the Disputed Domain Name to attract Internet users, for commercial gain to the Respondent's website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law and to benefit from the Complainants' established reputation. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Multiple Complainants
In the present case, the Complaint was filed by two separate Complainants. While the Policy and Rules do not directly contemplate the consolidation of multiple complainants in a single administrative complaint, numerous panels have found that in certain circumstances such a consolidation may be permitted.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).1
In the case at hand, it is clear from both the certificates of incorporation and the French commercial register that both Complainants are legally associated, with the First Complainant acting as the principal and legal representative of the Second Complainant. Additionally, both Complainants are established at the same address and jointly operate the platform on which they provide their cryptocurrency services. It is apparent for the Panel that the First Complainant is the holder of the rights related to the domain names and trademark portfolio and that the Second Complainant is the operational service provider of the cryptocurrency services.
The Panel therefore finds that it is sufficiently established that the Complainants have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to consolidate the Complainants. 6.2. Substantive Elements of the Policy
For the Complainants to succeed in their Complaint, it is required to demonstrate the following under Paragraph B(11)(d)(1) of the ADR Rules:
1. The Disputed Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or Community law; and either
2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; or
3. The Disputed Domain Name has been registered or is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law.
Article 10(1) of the Commission Regulation No 874/2004 laying down public policy rules concerning the implementation and functions of the .eu Top-Level Domain ("TLD") and the principles governing registration specifically provides that prior rights shall be understood to include, inter alia, registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.
The First Complainant establishes that it is the holder of a pending trademark application for the combined trademark COINHOUSE. Although Complainants contend that French trademark rights are effective from the filing date, such protection first requires the formal registration of the trademark. As a result, a pending trademark application would not by itself establish trademark rights within the meaning of Paragraph B(11)(d)(1)(i) of the ADR Rules (see section 1.1.4 of WIPO Overview 3.0).
Additionally, the Panel finds that Complainants have not produced sufficient evidence to successfully assert unregistered trademark rights or to support acquired distinctiveness. No evidence demonstrating the duration of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, or consumer surveys have been provided. As a result, the Panel is of the opinion that conclusory allegations of unregistered rights or acquired distinctiveness, even if undisputed in the case at hand, do not suffice to show secondary meaning (see section 1.3 of WIPO Overview 3.0). The Complainants further assert that the Respondent has been using an almost identical sign to the mark reflected in their pending trademark applications on its website connected to the Disputed Domain Name, indicating that the Respondent has been targeting the Complainants' mark. However, the Complainants fail to provide any evidence indicating that their use of the mark reflected in the pending trademark applications predates the use of Respondent's sign on its website connected to the Disputed Domain Name.
The Second Complainant was established under the commercial/company name COINHOUSE in France on December 14, 2015. The Second Complainant has also been providing its cryptocurrency services to its customers under the same trade name. As established above, a trade name and/or company name may amount to a prior right under the meaning of Article 10(1) of the Commission Regulation No 874/2004 if it is protected under the national law in the Member State where they are held. Trade names and company names are protected in France under its trade practices and consumer protection law and under general tort law concerning unfair commercial practices. As a result, the Panel finds that the trade name and company name "Coinhouse" is a recognizable right within the meaning of Paragraph B(11)(d)(1)(i) of the ADR Rules.
Therefore, Complainants have established that they have rights recognized or established by national law of a Member State and/or Community law.
The Disputed Domain Name incorporates the Complainants' COINHOUSE name in its entirety. It is well established that the applicable TLD suffix in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Disputed Domain Name is identical to the Complainants' COINHOUSE name in respect of which they have rights recognized or established by national law of a Member State and/or Community law. Accordingly, the Complainants have made out the first element that they must establish. B. Rights or Legitimate Interests
Under Paragraph B(11)(d)(1)(ii) of the ADR Rules, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is an established consensus view of previous UDRP panels that it is sufficient for the Complainants to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Complainants contend that the Respondent does not have any prior rights that may ground the registration and the use of the Disputed Domain Name. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainants. There are no indications that a connection between the Complainants and the Respondent existed.
Moreover, the Panel notes that the Respondent has essentially operated a website, connected to the Disputed Domain Name, which is in the same field as the Complainants' activity, namely cryptocurrency. The Respondent also uses the same name as the Complainants.
Evidence of the case suggests that the Respondent is not using the website connected to the Disputed Domain Name in connection with a legitimate activity. The website appears to omit any reference to the Respondent's identity and contact details. The omission of this information is considered contrary to established European Union legislation on electronic commerce. Further, through limited factual research, the Panel finds that the Terms of Service on the website connected to the Disputed Domain Name are a literal copy of those found on another unrelated cryptocurrency exchange website, except from all identification and contact information being expressly omitted. Lastly, the Complainants have presented correspondence with consumers suggesting the existence of confusion, as these consumers appeared to have initially contacted the Respondent instead of the Complainants.
The Respondent had the opportunity to demonstrate his rights or legitimate interests in the Disputed Domain Name, but did not do so. It even appears that the Respondent has taken active steps to conceal its identity, as the information contained in the WhoIs records is not accurate. In the absence of a Response from the Respondent, the prima facie case established by the Complainants has not been rebutted.
Therefore, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainants succeed on the second and final element that they must establish. C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation and Paragraph of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are considered alternative requirements.
As the Panel has found that the Respondent lacks rights or legitimate interests in the Disputed Domain Name for the reasons explained under 6.2.B. above, no further discussion on bad faith registration or use is necessary. Nevertheless, the Panel will briefly address this third element.
Paragraph B(11)(f) of the ADR Rules provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration or use is the use of a domain name to attract Internet users, for commercial gain to the respondent's website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent.
The use of the Disputed Domain Name to operate a similar website under the same name offering similar services to Internet users creates a high likelihood of confusion with the COINHOUSE name and associated services of the Complainants. Evidence shows that the COINHOUSE name was used by the Complainants before the registration of the Disputed Domain Name by the Respondent on March 26, 2017. Second the Complainant was incorporated under the company name COINHOUSE on December 14, 2015, and the Complainants show that the name COINHOUSE was used before that date through the website linked to the First Complainants' domain name . Given the specific field of activity in which both parties are active, it is unlikely that the Respondent was unaware of the Complainants and their rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainants' rights at the time of registration suggests bad faith.
Additionally, Respondent did not rebut Complainant's arguments regarding consumer confusion as to the websites of both parties.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered or is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Second Complainant Coinhouse.2
The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction.
Flip Jan Claude Petillion
Sole Panelist
Date: June 1, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy ("UDRP") and Rules, the Panel finds UDRP precedent to be relevant to this case.
2 The Complainants request the transfer of the Disputed Domain Name to the Second Complainant as the remedy for the Complaint. As the Second Complainant is established and located within the European Union, namely France, it satisfies the general eligibility criteria for registration of the Disputed Domain Name set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.
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