Coinbase, Inc. v. Marcos Paulo / Andrey Felipe / Mariela Har / Marcelo Bolanhos / Fabio Goulart / Arnaldo Cesar / Bruno Valverde / nonato silva
Claim Number: FA2108001959816
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Marcos Paulo / Andrey Felipe / Mariela Har / Marcelo Bolanhos / Fabio Goulart / Arnaldo Cesar / Bruno Valverde / nonato silva (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2021; the Forum received payment on August 16, 2021.
On August 17, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@ccoinbase.com, postmaster@coinbaae.com, postmaster@coinbasde.com, postmaster@coinbbase.com, postmaster@coinbsse.com, postmaster@coinvase.com, postmaster@oinbase.com, postmaster@xcoinbase.com, postmaster@coinbasi.pro. Also on August 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 September 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In this proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The record shows that the domain names are: (a) constructed in the same manner (close misspellings of Complainant’s COINBASE mark), (b) privately registered through the same registrar, (c) 2 Domain Names are being used for fraudulent activities, and (d) 8 Domain Names are hosted on the same IP address and by the same ISP. Based on the record, I conclude that all of the domain names have been registered by the same domain name holder.
A. Complainant
1. Complainant is a leading provider of end-to-end financial infrastructure and technology for the crypto economy. Complainant has common law rights in the COINBASE mark through Complainant’s continuous use of the mark and the famous nature of the mark. Complainant also has rights in the COINBASE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,567,878, registered July 15, 2014).
2. Respondent’s <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro>[i] domain names are confusingly similar to Complainant’s COINBASE mark as each is comprised of a misspelling and typosquatted version of Complainant’s mark.
3. Respondent lacks rights or legitimate interests in the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names. Respondent is not commonly known by the domain names nor has Respondent been authorized by Complainant to use the COINBASE mark.
4. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent uses them to pass off as Complainant to phish for login credentials, fails to make active use of them, and engages in typosquatting.
5. Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith as Respondent has shown a pattern of bad faith registration.
6. Respondent also uses the domain names to pass off as Complainant to phish for login credentials and thus disrupt Complainant’s business.
7. Additionally, Respondent fails to make active use of the domain names and engages in typosquatting.
8. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the COINBASE mark based on Respondent’s typosquatting and the fame of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COINBASE mark. Respondent’s domain names are confusingly similar to Complainant’s COINBASE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names and that Respondent registered and uses the domain names 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 COINBASE mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,567,878, registered July 15, 2014). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Complainant has demonstrated rights in the COINBASE mark per Policy ¶ 4(a)(i). Although Complainant also asserts common law rights in the COINBASE mark, as the Panel has determined that Complainant holds a trademark for the COINBASE mark, it is unnecessary to determine whether the Complainant also holds common law rights in the mark.
Complainant argues Respondent’s <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names are confusingly similar to Complainant’s COINBASE mark as each is comprised of a misspelling and typosquatted version of Complainant’s mark: <ccoinbase.com> duplicates a single letter (c); <coinbbase.com> duplicates a single letter (b); <coinbaae.com> substitutes a single letter (a for s); <coinbsse.com> substitutes a single letter (s for a); <coinvase.com> substitutes a single letter (v for b); <coinbasde.com> adds a single letter (d); <oinbase.com> omits a single letter (c); <xcoinbase.com> adds a single letter (x); and <coinbasi.pro> substitutes a single letter (i for e). The purposeful misspelling of a mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). E.g., Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Therefore, the Panel holds that the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names as Respondent is not commonly known by the domain names nor has Complainant authorized or licensed to Respondent any rights in the COINBASE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the domain names lists the registrants as “Marcos Paulo / Andrey Felipe / Mariela Har / Marcelo Bolanhos / Fabio Goulart / Arnaldo Cesar / Bruno Valverde / nonato silva,” and the record contains no other evidence to show that Respondent was authorized to use the COINBASE mark. Therefore, the Panel may find Respondent is not commonly known by the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses them to pass off as Complainant to phish, or alternatively, fails to make active use of them. Passing off as a complainant to phish for login credentials is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Additionally, the inactive holding of a domain name incorporating the mark of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the <ccoinbase.com> domain name redirects to Respondent’s website at the <coinbasi.pro> domain name which falsely impersonates Complainant, copies Complainant’s website, and is intended to “phish” for the login credentials of new and/or existing customers of Complainant. Complainant also provides screenshots showing the error messages associated with <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, and <xcoinbase.com> domain names. Therefore, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith as Respondent engages in a pattern of bad faith registration. Registering multiple domain names containing a complainant’s mark can demonstrate bad faith per Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Respondent registered nine domain names containing misspelled versions of Complainant’s mark Therefore, the Panel holds that Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith as Respondent fails to make active use of them. Failing to make active use of a domain name incorporating the mark of another indicates bad faith per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides screenshots showing the website error messages associated with the domain names. Therefore, the Panel holds that Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights to the COINBASE mark prior to registering the domain names based on Respondent’s typosquatting and the fame of Complainant’s mark. A respondent’s typosquatting can demonstrate actual knowledge of a complainant’s rights in a mark and show bad faith per Policy ¶ 4(a)(iii). See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name . . . .”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel agrees that Respondent registered and uses the <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights in the COINBASE mark given the fame of Complainant’s mark, and Respondent’s selection and registration of nine Domain Names that are close misspellings and/or typosquatted versions of Complainant’s mark.
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 <ccoinbase.com>, <coinbaae.com>, <coinbasde.com>, <coinbbase.com>, <coinbsse.com>, <coinvase.com>, <oinbase.com>, <xcoinbase.com>, and <coinbasi.pro> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 23, 2021
[i] The domain names were registered on May 22, 2013, May 24, 2016, May 25, 2016, May 25, 2017, July 29, 2018, March 28, 2019, November 17, 2019, and August 11, 2021.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page