Complainant is Blockfi Inc., United States of America (“United States”), represented Haynes and Boone, LLP, United States.
Respondent is WhoisGuard, Inc., Panama / kilian mpape1, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 29, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 25, 2021. The Center appointed Marina Perraki as the sole panelist in this matter on March 26, 2021. 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 Per Complaint, Complainant is a financial services company founded in 2017 dedicated to building a bridge between cryptocurrencies and traditional financial and wealth management products. Complainant’s platform manages more than USD 2 billion in assets. Complainant posts numerous videos and podcasts on blockchain technology, cryptocurrency and wealth management in social media. Complainant is the owner of the United States Trademark Registration No. 5989814 BLOCKFI (word), filed on July 29, 2019, and registered on February 18, 2020, for services in international classes 36 and 42, with first use in commerce January 22, 2019. Complainant is also the owner of the domain name The Domain Name was registered on October 28, 2020, and resolves to a website which purports to offer cryptocurrency services similar to those offered by Complainant, while selling cryptocurrency tokens using the abbreviation “BFI” (the “Website”). Per Complaint, the Website contains a “whitepaper” the content of which appears to have been copied largely from the publication of a third -party cryptocurrency provider, Paradigm.xyz. Per Complainant’s information and belief, Respondent is using the photo image of a Canada -based business owner, to falsely identify it’s Chief Marketing Officer (“CMO”), under a different name on the Website. Finally, the Registrar confirmed Respondent’s as kilian mpape from United Kingdom. The Website encourages users to connect their crypto -wallets to the Website alleging that doing so will allow them to make transactions with successful yields, including “interest rates up to 150% APY.” On January 7, 2021, Complainant sent a cease and desist letter to Respondent, to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered or is being used in bad faith. The Policy as amended generally conforms to the Uniform Domain Name Dispute Resolution Policy (UDRP). The Panel will rely on relevant UDRP jurisprudence for appropriate guidance, though cognizant of and taking this difference into account. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s mark BLOCKFI in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the word “swap” does not prevent a finding of confusing similarity as the BLOCKFI mark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The country code Top -Level Domain (“ccTLD”) “.io” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Facebook, Inc. v. Ronal YauWIPO Case No. DIO2020-0001; Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122; and section 1.11, WIPO Overview 3.0). The Panel finds that the Domain Name is confusingly similar to the BLOCKFI mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Name resolves to the Website, which incorporates the trademark of Complainant throughout and provides services that are purportedly similar to those of Complainant, while offering cryptocurrency tokens using the abbreviation “BFI”, namely consisting of letters included in the BLOCKFI mark of Complainant. As Complainant further demonstrated, the Website contains a “whitepaper” the content of which appears to have been copied largely from the publication of a third -party provider. Furthermore, on Complainant’s information and belief, Respondent is using the photo image of another person, to falsely identify it’s CMO on the Website and in social media, while in the WhoIs records it has provided contact information (address and phone number) that appears to belong to third parties, whereas Respondent’s name is the phonetic equivalent of a well -known footballer. Furthermore, as Complainant demonstrated, the Website encourages users to connect their crypto -wallets to the Website alleging that doing so will allow them to make transactions, including with “interest rates up to 150% APY.” The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered or Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s BLOCKFI trademark enjoys recognition in its field of financial services. Because the BLOCKFI mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Furthermore, the Domain Name incorporates Complainant’s BLOCKFI mark in its entirety along with the word “swap” which is a word used in the financial services sector, which is further indication that Respondent knew of Complainant and its field of business when registering the Domain Name. Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search due to Complainant’s use of BLOCKFI mark on the Internet (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; and Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, a platform provided online. Respondent could have searched the United States trademark registry and would have found Complainant’s prior registration in respect of BLOCKFI (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create the Website, which incorporates Complainant’s registered trademark and similar logos, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorized dealer of Complainant. The Domain Name operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use ( WhatsApp Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Don Stanley, WIPO Case No. DIO2021-0002; and WIPO Overview 3.0, section 3.3 and section 3.4). Furthermore, as Complainant demonstrated a) the Website contains a “whitepaper” the content of which appears to have been copied largely from the publication of a third -party, b) on Complainant’s information and belief, Respondent is using the image of another person, to falsely identify it’s CMO on the Website and social media and c) Respondent appears to have provided contact information that belongs to third parties. The Panel takes all the above into account along with the fact that Respondent has not replied to Complainant’s warning letter and has not submitted a response to the Complaint. Lastly, as Complainant demonstrated, the Website encourages users to connect their crypto -wallets to the Website alleging that doing so will allow them to make transactions, including with “interest rates up to 150% APY.” Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established Policy, paragraph 4(a)(iii). 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 Domain Name Marina Perraki 1 “Kilian mpape” is the phonetic equivalent of a well -known footballer and without the benefit of a response to clarify, this may be seen as further evidence of bad faith.
Sole Panelist
Date: April 9, 2021
Full & Egal Universal Law Academy