ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Ledger SAS v. David J. Perkins, Worldwide Domains Case No. DPH2024-0004 1. The Parties The Complainant is Ledger SAS, France, represented by Tmark Conseils, France. The Respondent is David J. Perkins, Worldwide Domains, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with DotPH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2024. On September 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 24, 2024. The hard copies of the Complaint and the amended Complaint were received on September 26, 2024 by the Center. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2024. The Respondent did not file any Response. Accordingly, the Center notified the Respondent’s default on October 25, 2024. The Center appointed Edoardo Fano as the sole panelist in this matter on October 30, 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.
page 2 The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Ledger SAS, a French company operating in the cryptocurrency, Blockchain and NFT security solutions field, and owning several trademark registrations worldwide for LEDGER, among which the following ones: - International Trademark Registration No. 1416481 for LEDGER, registered on April 27, 2018; - French Trademark Registration No. 4105615 for LEDGER, registered on July 15, 2014; - European Union Trademark Registration No. 018500221 for LEDGER, registered on December 29, 2021. The Complainant also operates on the Internet, its main website being at “www.ledger.com”. The Complainant provided evidence in support of the above. According to the information received from the Registry, the disputed domain name was registered by the Respondent on August 31, 2024, and, before the Complaint was filed, it redirected to a website in which the Complainant’s trademark was reproduced and the same services as the Complainant were purportedly provided, in order to conduct a fraudulent phishing activity, as well as to other different websites not related to the Complainant. After the Complaint was filed, the disputed domain name redirected first to a pornographic website and currently it resolves to an inaccessible webpage. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is identical to its trademark LEDGER. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Before the Complaint was filed, the disputed domain name redirected to a website in which the Complainant’s trademark was reproduced and the same services as the Complainant were purportedly provided, in order to impersonate the Complainant and conduct a fraudulent phishing activity, as well as to other different websites not related to the Complainant. After the Complaint was filed, the disputed domain name redirected first to a pornographic website and then to an inaccessible webpage.
page 3 The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark LEDGER is known in the cryptocurrency, Blockchain and NFT security solutions field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in connection with a fraudulent phishing activity, qualifies as bad faith registration and use. Finally, the Complainant asserts that the Respondent has engaged in a pattern of registering several other abusive domain names, all of them ending with the suffix “.com.ph” or “.ph”. B. Respondent The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.1 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed 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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark LEDGER both by registration and acquired reputation. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. It is also well accepted that a country code Top-Level Domain suffix, in this case “.com.ph”, is typically ignored when assessing the confusing similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1. 1In light of the substantive and procedural similarities between the phDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited decisions under the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
page 4 The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is identical to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name. Moreover, the Panel finds that the composition of the disputed domain name (identical to the Complainant’s trademark and domain name , apart from “.ph”) is likely to confuse users. Panels have held that the use of a domain name for illegal activity, here impersonation/passing off and phishing, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
page 5 C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent has] registered or has acquired the domain name 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of the complainant; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. In the present case, regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark LEDGER in the field of cryptocurrency, Blockchain and NFT security solutions is clearly established, and the Panel finds that the Respondent must have known of the Complainant, and deliberately registered the disputed domain name in bad faith, especially because in the website at the disputed domain name the Complainant’s trademark was reproduced, and the same services as the Complainant were purportedly provided. The Panel further notes that the disputed domain name was also being used in bad faith since the Respondent was trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, in connection with a fraudulent phishing conduct, an activity clearly detrimental to the Complainant’s business. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith, also taking into consideration the pattern of conduct of the Respondent in several other cases of abusive domain name registration against third parties. Panels have held that the use of a domain name for illegal activity, here impersonation/passing off and phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4. Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which is identical to the Complainant’s trademark, further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1. As regards the current use of the disputed domain name, resolving to an inaccessible webpage, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the reputation of the Complainant’s trademark, the previous use of the disputed domain name, and the failure of the Respondent to submit a response, and finds that in the circumstances of
page 6 this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 disputed domain name be transferred to the Complainant. /Edoardo Fano/ Edoardo Fano Sole Panelist Date: November 13, 2024
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