ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Canaan Creative Co., Ltd. v. Evgenii Knyazev Case No. DIO2024-0021 1. The Parties The Complainant is Canaan Creative Co., Ltd., China, represented by Watson Farley & Williams (Middle East) LLP, Singapore. The Respondent is Evgenii Knyazev, Russian Federation. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2024, 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 (LLC “Bitline” (trading as Crypto Line)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2024, 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 August 2, 2024. 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 August 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2024.
page 2 The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 28, 2024. 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 an operating subsidiary within the Canaan Group which produces and supplies the ASIC-based Bitcoin mining machines. Starting from 2013, the Canaan Group initially supplied its mining machines under the brand name “Avalon”. The Complainant subsequently renamed the brand to “AvalonMiner”. Currently, the Canaan Group is selling its mining machines to 46 countries through its online store at its domain name . The Complainant is the owner of several CANAAN trademark registrations, including: − the European Union Trade mark Registration for CANAAN (figurative) No. 018513133, registered on December 11, 2021; − the Singaporean Trademark Registration for CANAAN (stylized characters) No. 40202116721P, registered on January 13, 2022; and − the Australian Trademark Registration for CANAAN (stylized characters) No. 2195124, registered on February 23, 2022. The Complainant is also the owner of the domain names incorporating its CANAAN trademark, including its official domain name . The Domain Name was registered on July 8, 2023. On May 8, 2024, a legal representative of the Canaan Group sent a cease-and-desist letter to the Respondent’s email address featured on the corresponding website. No response to this letter was received. As of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has resolved to an online store purportedly selling the Canaan Group’s AvalonMiner mining machines (the “Website”). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. First, the Complainant contends that the Domain Name is e is identical or confusingly similar to the trademark in which the Complainant has rights. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name. Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Domain Name has been registered or is being used in bad faith. The requested remedy may only be granted if the above criteria are met. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Thus, the Panel will, where appropriate, apply principles that have been established in relation to the UDRP in deciding this dispute. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Identical or Confusingly Similar Under the first element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights. The Complainant holds valid CANAAN trademark registrations. The Domain Name incorporates this trademark in its entirety. As numerous panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The Domain Name differs from the Complainant’s CANAAN trademark merely by the addition of a letter “i” in the beginning. It is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. See section 1.9 of the WIPO Overview 3.0. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s CANAAN trademark. In sum, the first element of the Policy has been established. B. Rights or Legitimate Interests Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
page 4 (i) that it has used or made 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 prior to the notice of the dispute; or (ii) that it is commonly known by the domain name, even if it has not acquired any trademark or service mark rights; or (iii) that it 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. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence on record that the Complainant’s CANAAN trademark registrations predate the Respondent’s registration of the Domain Name. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use the CANAAN trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name. Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Name. On the contrary, the Domain Name resolves to the Website in Russian and Chinese purportedly offering for sale the Canaan Group’s AvalonMiner mining machines, as well as prominently featuring the Complainant’s CANAAN trademark and product images. Such use of the Domain Name does not confer rights or legitimate interests on the Respondent. A respondent could make a bona fide offering of goods and services as a reseller or distributor of a complainant’s products, and thus have a legitimate interest in the disputed domain name, if this use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903. While the Complainant states that the Respondent is not authorized to resell or distribute the Complainant’s products, taking into consideration the nature of the Domain Name as compared to the trademark, the Panel will for completeness analyze the “fair use” factors enumerated under the above-referenced “Oki Data test”. These requirements are that: (1) the Respondent must actually be offering the goods or services at issue; (2) the Respondent must use the Website to sell only the trademarked goods or services, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods or services; (3) the Website must accurately disclose the Respondent’s relationship with the trademark owner; and (4) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. In the present case, the above referred requirements are not met. The Domain Name and the Website suggest at least an affiliation with the Complainant and its CANAAN trademark. The Panel believes that the use of the Complainant’s trademark in the Domain Name and on the Website misleads Internet users regarding the lack of relationship between the Respondent and the Complainant, as Internet users may falsely believe that the Respondent is an entity associated with the Complainant. Moreover, the Website features the information that it is operated by the company Crypto Line which is falsely presented as an official distributor of the Complainant’s mining machines, as well as a provider of after-sales service for these machines cooperating with the Complainant. Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel concludes that the second element of the Policy has been established.
page 5 C. Registered or Used in Bad Faith Under the third element, the Complainant must prove that the Domain Name has been registered or is being used in bad faith. Under paragraph 4(b) of the Policy, evidence of bad faith registration or use includes without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on a website or location. As indicated above, the Complainant’s rights in the CANAAN trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. This finding is supported by the content of the Website allegedly offering for sale the Complainant’s products, prominently displaying the CANAAN trademark together with the Complainant’s product images, as well as featuring false information about the relationship with the Complainant. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s CANAAN trademark is well known and unique to the Complainant. Thus, the Respondent could not reasonably ignore the reputation of goods and services under this trademark. In sum, the Respondent, more likely than not, registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s CANAAN trademark. Furthermore, as previously noted, the Domain Name has been used in bad faith by the Respondent to resolve Internet users to the Website. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to this Website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Website. For the reasons discussed above, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant. /Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist Date: September 11, 2024
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