Colin LeMahieu v. Benjamin Toledo
Claim Number: FA2101001928635
Complainant is Colin LeMahieu (“Complainant”), represented by Maulin V Shah of Envision IP LLC, New York, USA. Respondent is Benjamin Toledo (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nano-markets.com> (“Domain Name”), registered with Hosting Concepts B.V. d/b/a Openprovider.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2021; the Forum received payment on January 18, 2021.
On January 18, 2021, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <nano-markets.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nano-markets.com. Also on January 20, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Colin LeMahieu, is the founder of the NANO digital currency, which is currently one of the top 75 global cryptocurrencies. Complainant has rights in the NANO mark through its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. UK00003275038, registered Mar. 9, 2018). Complainant has also registered both a word and design trademark with the World Intellectual Property Organization (“WIPO”) (NANO – Reg. 1,401,527, registered Jan. 4, 2018; NANO (Design) – Reg. 1,398,644, registered Jan. 16, 2018). Respondent’s <nano-markets.com> domain name is confusingly similar to Complainant’s mark, only differing by the addition of a hyphen and the generic term “markets” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nano-markets.com> domain name as it is not commonly known by the Domain Name and is neither an authorized user or licensee of the NANO mark. Respondent also does not use the Domain Name in connection with a bona fide offer for goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent, from the website accessible from the Domain Name (“Respondent’s Website”) attempts to pass itself off as Complainant, utilizing a logo identical to Complainant’s registered design mark, to create confusion as to the source of the services offered from the Respondent’s Website. Additionally, Respondent offers digital currency trading for a fee on the Domain Name, competing with Complainant’s business. Additionally, Respondent appears to use the Domain Name to operate one of many phishing schemes and uses clearly false details when identifying the individuals behind the purported business.
Respondent registered and uses the <nano-markets.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant, both disrupting the Complainant’s business and using the Domain Name to attract customers in bad faith for commercial gain. Respondent also uses the Domain Name to operate a phishing scheme. Additionally, Respondent used a privacy service when registering the Domain Name. Complainant also contends that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the NANO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NANO mark. The Domain Name is confusingly similar to Complainant’s NANO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the NANO mark through its registration of the mark with the UKIPO (e.g. Reg. UK00003275038, registered Mar. 9, 2018). Registration of a mark with a trademark agency, such as the UKIPO or WIPO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel finds that the <nano-markets.com> domain name is confusingly similar to the NANO mark as it adds the term “-markets” and the “.com” gTLD to Complainant’s wholly incorporated NANO mark. The addition of a generic or descriptive term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the NANO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Benjamin Toledo” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
While the Domain Name is presently inactive, Complainant alleges, and provides evidence supporting the allegation, that prior to the commencement of the proceeding, Respondent used the Domain Name for a website that passed itself off as the Complainant for the purpose of selling digital currency trading services under the NANO mark. The intention of the Respondent to associate itself with the Complainant is apparent when viewing the Respondent’s Website, which not only reproduces the NANO mark, but also the Complainant’s NANO device mark registered with WIPO and contains clearly false information about the individuals behind the Respondent’s Website. The use of a confusingly similar domain name to resolve to a webpage that offers goods or services in the same field of operations as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, May 22, 2020, Respondent had actual knowledge of Complainant’s NANO mark since the Complainant is a well-known entity and the Respondent’s Website both offers services in the same field as Complainant and reproduces both the Complainant’s NANO and NANO device marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s NANO Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website offering digital currency trading services in a manner that misleads consumers into thinking that Respondent, or the services offered by the Respondent, is in some way connected to the Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nano-markets.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 16, 2021
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