The Complainant is Libra Association d/b/a Diem Association, Switzerland, represented by Fenwick & West, LLP, United States of America (“United States”).
The Respondent is REDACTED FOR PRIVACY, Privacy service provided by Withheld for Privacy ehf, Iceland / Liam Price, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2021, 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 September 3, 2021 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 7, 2021. The Respondent sent an informal communication to the Center on August 28, 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 the Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Center informed that Parties that would proceed with Panel appointment on October 25, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on November 1, 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 BackgroundThe Complainant is a membership association comprising a range of businesses and nonprofit organizations. Its stated aim is to build a global payment system built on blockchain technology and a cryptocurrency backed by a reserve of assets. This initiative was originally branded as LIBRA and plans for the LIBRA payment system and cryptocurrency were announced in or around June 2019. On December 1, 2020, the Complainant announced that it was changing the names of its system and cryptocurrency from LIBRA to DIEM. The announcement of the rebrand received significant media attention.
The Complainant owns trade mark registrations for both DIEM and LIBRA, including, by way of example;
- Norwegian Trade Mark, registration number 308979, for LIBRA in classes 9, 35, 36, 38, 42 and 45, registered on March 20, 2020;
- Benelux Trade Mark, registration number 1430575, for DIEM, in classes 9, 35, 36, 42 and 45, registered on July 24, 2021.
The Complainant also owns many domain names which include its DIEM trade mark.
The disputed domain name was registered on December 2, 2020. As showed in the Web archive pages attached to the Complaint, on February 6, 2021, the website to which the disputed domain name resolved was headed “diem”. A notice at the top of the home page stated; “Libra coin now called Diem coin” and an article underneath was headed “Libra association backed by Facebook rebranded as Diem”. Amongst other information on the home page was a separate section headed “The Diem Association” which was described as “An independent membership organization". Another section of the home page began; “Diem. A new name for a new day, when it’s easy, secure and affordable to send money anywhere. Together we’re building a trusted, innovative financial network for people and businesses around the world”. Another section purported to explain “How to earn free Diem coin”.
As at August 24, 2021, the home page of the Respondent’s website was headed “diemlibre”, underneath which appeared the sentence “How To Buy Diem Coin Cryptocurrency in 2021” and beneath that the text “Where to buy Diem Cryptocurrency. Invest in Diem Coin, Buy Diem Libre Now. Discover the new ways to buy Diem Libre Coin”.
The Complainant has provided evidence of email complaints sent to it by consumers who believed that the Respondent’s website was connected in some way with that of the Complainant and that, as a consequence, they had seemingly purchased Diem coin from the Respondent, but had not received it. The Complainant has also provided copies of emails between its representatives and the Respondent, exchanged between February and April, 2021, in which the Complainant’s representatives asserted that the Respondent’s registration and use of the disputed domain name was misleading consumers into thinking that the Respondent was associated in some way with the Complainant. The Respondent’s position, as set out in its email to the Complainant’s representatives dated February 16, 2021, was “I am saying modifications are being made and pls give us some time. Secondly why should I delete my domain name. DiemLibre is a [sic] another company on its own”. The Respondent did not reply to a further email from the Complainant’s representative dated April 26, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The disputed domain name includes the entirety of the Complainant’s DIEM trade mark combined with the additional element “libre”, which is identical to the Complainant’s LIBRA trade mark, save for the final letter. The replacement of a single vowel at the end of the Complainant’s LIBRA trade mark does not dispel the confusing similarity between the disputed domain name and the Complainant’s DIEM and LIBRA trade marks.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered on December 2, 2020, that is the day after the Complainant’s widely publicized announcement of its adoption of its DIEM brand. The Respondent is not a licensee of the Complainant, is not affiliated with it and has not been authorized to use the Complainant’s DIEM or LIBRA trade marks, whether in a domain name or otherwise. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and, to the best of the Complainant’s knowledge, has never done so. The disputed domain name resolves to a website which as, at August 2021, claims to offer Diem coin for sale. The Complainant’s DIEM mark appears repeatedly throughout the Respondent’s website, which uses the same purple colour scheme as the Complainant’s website at “www.diem.com”. The Respondent’s website also features a login page where Internet users can create an account or enter an email address and password and makes numerous statements, both explicit and implicit, that the Respondent is offering, and/or authorized to offer, Diem coins or is otherwise affiliated with the Complainant.
In fact, the Complainant’s Diem currency is still in development and is not yet available. The Respondent cannot sell or exchange Diem coins or assist consumers in purchasing them, nor does the Respondent have any relationship with the Complainant. The Complainant has received numerous complaints from Internet users reporting that they attempted to purchase Diem coin from the Respondent’s website, by transferring bitcoin or other currencies to the Respondent, in the mistaken belief that the Respondent’s website was offering for sale the Complainant’s Diem cryptocurrency. Despite requests from the Complainant’s representatives that it stop its unauthorized use of DIEM, the Respondent has continued to operate its website and falsely claim to be offering Diem coin for sale.
Additionally, the email address for the personal named Respondent is shown as the contact address for a number of other domain names that make unauthorized use of the Complainant’s DIEM and LIBRA marks in an attempt to mislead consumers including
The Respondent has not served a formal response to the Complaint. However, following the filing of the Complaint, the Respondent sent an email to the Center and the Complainant’s representatives, dated August 28, 2021, asserting that Diemlibre was a cryptocurrency token based on the Ethereum Network and providing a link to transactions and other data recorded in relation to Diemlibre on the smart contracts platform at “www.etherscan.io”. The Respondent says that it is not affiliated, directly or indirectly to the Complainant’s association and does not make any claim that it is. It says it makes clear to Internet users who get confused that it is Diemlibre and not Diem. The Respondent has provided a screenshot of an online chat in which it informed an Internet user who had approached it seeking an NFT (non-fungible token) “to help spread Diem” that “This is Diemlibre not Diem”.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(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 or is being used in bad faith.
The Policy is similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), save that it is sufficient for a complainant to prove that either registration or use of the domain name in issue is in bad faith, whereas the UDRP requires the complainant to prove both.
A. Identical or Confusingly SimilarThe Complainant has provided details of a number of the registered trade marks it owns for DIEM and LIBRA. These include the registrations in respect of which full details have been provided above, which thereby establish its rights in these marks. It should be noted that none of the trade mark registrations for DIEM which have been provided by the Complainant pre-date the registration of the disputed domain name. However, section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that, for the purpose of considering the first element of the UDRP, it is sufficient for a complainant’s rights to be in existence as at the date of the filing of its complaint.
As a technical requirement of registration, the Top-Level Domain, that is “.io” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name includes the Complainant’s DIEM and LIBRA marks in their entirety, save that the “a” in LIBRA has been replaced by an “e”. This minor misspelling of the Complainant’s mark does not prevent the disputed domain name from being considered confusingly similar to it. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s DIEM and LIBRA marks are each recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or has made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made 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 in issue.
Whether the Respondent’s is using the disputed domain name in connection with a bona fide offering of goods and services requires consideration of a number of issues.
First, the Respondent has not provided any explanation as to the timing of its registration of the disputed domain name, one day after the Complainant changed its brand from LIBRA to DIEM. In the absence of any explanation, the strong presumption is that the Respondent registered the disputed domain name in order to exploit both the Complainant’s reputation in its former trade mark and the reputation it was likely to acquire in its new trade mark and to profit from the confusion thereby caused to Internet users.
Second, the Respondent’s website does not solely promote “Diemlibre”. Prominently positioned text on its home page, as at August 20201, includes “How To Buy Diem Coin Cryptocurrency in 2021”, “Invest In Diem Coin” and “Where to buy Diem Cryptocurrency”. These statements can only be referrable to the Complainant and not to the Respondent’s Diemlibre cryptocurrency. Nor is there any evidence that the Respondent is making any efforts to disclaim a connection with the Complainant. Even the example offered by the Respondent of its supposed clarification with a prospective customer, namely “This is Diemlibre not Diem”, does not explain to the customer that the Respondent has no association with the Complainant, nor is there any disclaimer to that effect on its website. Indeed, the form of the Respondent’s website as at February 2021, as described above, which makes no mention of Diemlibre and unequivocally masquerades as the Complainant’s website, establishes that misleading Internet users by suggesting an association with the Complainant has consistently been the Respondent’s objective. Nor has the Respondent addressed the evidence from the Complainant to the effect that Internet users are being confused by the Respondent’s website and, indeed, defrauded by the Respondent.
Third, the Respondent has not answered the Complainant’s assertion that his email address is shown as the contact email address for numerous other domain names, the composition of which is such that they were clearly intended to suggest an association with the Complainant, whilst it was branded as LIBRA.
As evidence that there is a bona fide business of substance behind its website, the Respondent has provided a link to the website at “www.etherscan.io” at which certain blockchain transactions are recorded and made publicly available. The data includes transactions which would seem to have taken place involving Diemlibre tokens. However, irrespective of whether or not Diemlibre is a genuine cryptocurrency, the facts and matters set out above provide ample evidence that the Respondent is intentionally using the confusing similarity between the disputed domain name and the Complainant’s DIEM and LIBRA marks, coupled with its website content, in order to deceive Internet users that it has some form of connection with the Complainant and to derive financial advantage from their confusion. As explained at section 2.13.1 of the WIPO Overview 3.0; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. It is accordingly clear that the disputed domain name is not being used in connection with a bona fide offering of goods and services.
There is no evidence to indicate that the Respondent has been commonly known by the disputed domain name and the second circumstance set out at paragraph 4(c) of the Policy is therefore inapplicable. Nor is the third circumstance applicable; the use being made by the Respondent of the disputed domain name is commercial in nature and the characteristics of the disputed domain name suggest an affiliation or connection with the Complainant which prevent its composition from comprising fair use.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered or Used in Bad FaithThe fact that the disputed domain name was registered the day after the Complainant publicized its rebranding from LIBRA to DIEM, and comprises, with one minor variation, a combination of the Complainant’s DIEM and LIBRA marks, points to the Respondent having registered the disputed domain name with an awareness of the Complainant and its activities. Registration of a domain name by a respondent in these circumstances is apt to indicate bad faith; see for example, Facebook Inc. v. Global Domain Privacy Services Inc. / Evgeniy Gavonov,WIPO Case No. DME2019-0011. Moreover, given the confusing similarity between the disputed domain name and the Complainant’s trade marks, coupled with the use made by the Respondent of the disputed domain name following registration, as described above, the Respondent was well aware of the capacity of the disputed domain name to attract, and cause confusion to, Internet users. Its registration in these circumstances is in bad faith; see Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited,WIPO Case No. D2016-1607.
Whilst, as at the date of registration of the disputed domain name the Complainant did not have a registered trade mark for DIEM and bad faith will not usually be found when a domain name is registered before a complainant has acquired registered rights in its mark, as at the date of registration of the disputed domain name, the Complainant had registered trade marks for LIBRA, which (as slightly varied) is also a component of the Respondent’s compound “Diemlibre” trading style. Moreover, UDRP panels are willing to find bad faith where, as here, the respondent’s intention in registering a domain name was to capitalize on the complainant’s nascent trade mark rights; see section 3.8.2 of the WIPO Overview 3.0.
As the Complainant’s requirement under the third element under the Policy is to show either that the disputed domain name was registered or that it was being used in bad faith, the Complainant succeeds in relation to the third element. However, for completeness, the Panel considers briefly the question of bad faith use. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name, as outlined above, falls within paragraph 4(b)(iv) of the Policy in that its branding and website content is intended to mislead Internet users into thinking that it is has some association with the Complainant, in order to solicit investments. The likelihood that prospective investors will be misled is increased because of the confusing similarity between the disputed domain name and the Complainant’s trade marks. Use of the disputed domain name in these circumstances is in bad faith. See, for example; Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.,WIPO Case No. D2017-0481.
The Panel therefore finds that the disputed domain name was registered and is also being used in bad faith.
7. DecisionFor 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
Antony Gold
Sole Panelist
Date: November 15, 2021