The Complainant is Dapper Labs Inc., Canada, represented Sheppard, Mullin, Richter & Hampton LLP, United States of America (“United States”).
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Christian Balando, Indonesia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2022, 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 17, 2022 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 amendment to the Complaint on September 21, 2022.
The Center verified that the Complaint together with the amendment to the 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 October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2021. On January 22, 2022, the Center received an amended coversheet for the Complaint from the Complainant.
The Center appointed Steven A. Maier, David H. Bernstein, and John Swinson as panelists in this matter on February 25, 2022. 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 company incorporated in Canada. It is a provider of software products and services in the blockchain field, claiming to provide dramatic speed improvements and to be designed for high-throughput, low-latency applications.
The Complainant is the applicant for a number of trademark registrations for a word mark FLOW, a combined mark FLOW together with a logo depicted in black and white, and a combined mark FLOW together with a logo depicted in green as shown below:
The Complainant’s earliest application for the word mark FLOW appears to be a Canada application filed on April 14, 2020. Its earliest applications for the combined mark using the black and white logo appear to be United States and Canada applications both filed on September 30, 2020. Its earliest application for the combined mark using the green logo appears to be a New Zealand application filed on December 9, 2021.
None of the Complainant’s trademark applications appear to have resulted in any registration being granted as at the date of this Decision. In the case of the United States application referred to above, upon which the Complainant expressly relies, and having a claimed date of first use in commerce of September 18, 2020, that application was suspended on September 13, 2021 because of the likelihood of confusion with prior registrations or applications comprising or including the name FLOW.1
The disputed domain name was registered on September 24, 2020.
The Complainant exhibits evidence that the disputed domain name has resolved to a website headed “FLOW SALE” which prominently displays the Complainant’s FLOW name and green logo design as depicted above. The green logo is repeated at other locations within the website. The website purports to offer blockchain and crypto development services and includes a page footer stating “Designed by Dapper Labs”.
5. Parties’ Contentions A. ComplainantThe Complainant claims first to have used the FLOW name with the black and white logo on September 18, 2020. It provides screen-prints of its own website at “www.onflow.org” explaining how its FLOW software platform works. It includes a list of commercial partners under the headings “Flow Community” and “Backers”. The Complainant also includes links to its social media accounts on YouTube, GitHub, and Twitter. The Twitter account “@flow_blockchain” includes a post dated September 18, 2020 offering links to “learn more about Flow” and to the Complainant’s website referred to above.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark name in which it has rights. It claims in particular to have obtained common law trademark rights in the name FLOW, and both common law trademark rights and copyright in the designs including its logos referred to above.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no affiliation with the Respondent and has never licensed or authorized it to use the FLOW trademark or copyright works. The Complainant denies that the Respondent is using the disputed domain name in connection with any bona fide offering of goods or services and contends that it is instead using the disputed domain name for a website which imitates the Complainant’s own website and seeks to collect personal information and money from Internet users.
The Complainant submits that the disputed domain name has been registered or is being used in bad faith. It states that the Respondent’s website infringes its FLOW trademark and the copyright in its logo designs, that it has a similar look and feel to the Complainant’s own website and that it was clearly designed to deceive. The Complainant highlights that the Respondent’s website claims to be “Designed by Dapper Labs” and provides evidence of substantial direct copying of the Complainant’s website content, including textual and graphical descriptions of its FLOW platform, and the lists of its commercial partners.
The Complainant provides evidence that the Respondent’s website also includes a page headed “FLOW SALE”, featuring once again the FLOW name and Complainant’s logo designs and inviting visitors to “Deposit funds” via the website. The Complainant contends, in particular, that the Respondent is seeking to confuse Internet users who are looking for the Complainant’s services into believing that its website is in some way affiliated with the Complainant and its services and to solicit money from such Internet users on the basis of that confusion.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly SimilarThe Complainant has not achieved any registrations for the trademark FLOW at the date of this Decision and the Panel notes that its relevant Unites States application has been suspended on the basis of potential confusion with other FLOW trademarks. Nevertheless, the Panel finds that the Complainant has used the name FLOW in connection with software services in the blockchain field and that it has promoted its services under that name by way of its website and social media presence. In the circumstances, and in the absence of any contrary argument on the part of the Respondent, the Panel finds that the Complainant has established a sufficient connection between the FLOW name and its commercial activities that the FLOW name has become a distinctive identifier which consumers associate with the Complainant’s services (see WIPO Overview 3.0, section 1.3); indeed it is for this reason that the Respondent appears to have registered the disputed domain name (and placed content affirming such on the related website). Noting also that the first element under section 4(a) of the Policy is typically regarded as a threshold test to establish a trademark owner’s standing to file a UDRP complaint (see e.g.,WIPO Overview 3.0, section 1.7), the Panel concludes that the Complainant has demonstrated that it has acquired common law (or unregistered) trademark rights in the mark FLOW.
The disputed domain name incorporates the whole of the Complainant’s trademark FLOW together with the additional term “token”, which is a dictionary word, the presence of which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The Panel therefore finds that the first element under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate InterestsIn the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file any Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel finds that the disputed domain name has been used to resolve to a website which impersonates the Complainant’s own website as further discussed below. Such use by the Respondent cannot give rise to rights or legitimate interests in respect of the disputed domain name and the Panel therefore finds that the second element under paragraph 4(a) of the Policy is satisfied.
C. Registered or Used in Bad FaithThe disputed domain name comprises the Complainant’s trademark FLOW together with the term “token”, which is generally accepted to refer to activities within the blockchain and cryptocurrency fields, being specifically the area to which the Complainant’s software is directed.
Further, it is clear to the Panel from the evidence submitted by the Complainant that the Respondent’s website prominently reproduces the Complainant’s FLOW trademark and copyright logos, copies content lifted from the Complainant’s own website, claims to have been designed by the Complainant itself and is intended to deceive Internet users into believing it is owned or operated by the Complainant.
In the circumstances, including once again the lack of any explanation on the part of the Respondent, the Panel has no hesitation in inferring that the Respondent registered the disputed domain name in the knowledge of the Complainant’s FLOW trademark and blockchain-related services and with the intention of taking unfair advantage of the Complainant’s reputation and goodwill attaching to that trademark.
Concerning the Respondent’s use of the disputed domain name, there is no doubt, in view of the Respondent’s clearly deceptive use of the Complainant’s name, trademark, logo and other intellectual property, that its website linked to the disputed domain name is intended to deceive Internet users. The Panel further accepts the Complainant’s submission that, by offering a “Deposit funds” page on that website, the Respondent is in all likelihood employing its deception for the purpose of illicit financial gain. The Panel finds therefore that, by using the disputed domain name, the 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 or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the third element under paragraph 4(a) of the Policy is satisfied.
7. DecisionIn the light of the suspension of the Complainant’s United States trademark application owing to the potential for confusion with other FLOW trademarks, the Panel has considered whether the appropriate remedy in this case may have been cancellation rather than the transfer of the disputed domain name. The Panel has, however, found that the Complainant has common law trademark rights in the name FLOW and it is not within the remit of a panel under the Policy to embark upon any enquiry into the respective rights of potentially competing trademark owners. In these circumstances, given that the United States Patent and Trademark Office has not finally ruled on whether any other parties have superior rights to the Complainant and whether the Complainant may nevertheless have rights in the trademark at issue, and noting that cancellation would leave the disputed domain name open to potential further abuse – in particular in light of the nature of the Respondent’s use of the dispute domain name, the Panel considers the transfer of the disputed domain name to be the appropriate remedy in accordance with the Complainant’s request.
In the circumstances, for the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Steven A. Maier
Presiding Panelist
David H. Bernstein
Panelist
John Swinson
Panelist
Date: March 11, 2022
1 Although the Complainant did not address these facts in the Complaint, the Panel is entitled to conduct its own research into matters of public record, including the status of the parties’ trademark applications: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8. Although this case falls for decision under the .IO Domain Name Dispute Resolution Policy as opposed to the UDRP, the references to the WIPO Overview 3.0 contained in this Decision are of equal relevance to a decision under the Policy.