Coinbase, Inc. v. yue Zhang
Claim Number: FA2109001966480
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is yue Zhang (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nftcoinbase.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2021; the Forum received payment on September 27, 2021.
On September 28, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nftcoinbase.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@nftcoinbase.com. Also on September 30, 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 October 26, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Coinbase, provides technology in the cryptoeconomy. Complainant has rights in the COINBASE mark based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., 4,567,878, registered July 15, 2014). The <nftcoinbase.com> domain name is confusingly similar with Complainant’s COINBASE mark because it incorporates the entire mark, adding only the generic or descriptive term “NFT” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <nftcoinbase.com> domain name because Respondent is not commonly known by the disputed domain and is not authorized to use complainant’s COINBASE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain resolves to a parked website which is being used to disrupt Complainant’s business.
Respondent registered and is using the disputed domain in bad faith because Respondent uses it to disrupt Complainant’s business and attract customers for financial gain. Complainant also contends it is also likely that Respondent is attempting to sell the disputed domain name. Furthermore, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the COINBASE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <nftcoinbase.com> domain name.
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 based upon registration with the United States Patent and Trademark Office (“USPTO”). (e.g., 4,567,878, registered July 15, 2014). The <nftcoinbase.com> domain name is confusingly similar to the complainant’s mark because it incorporates the entire mark adding only the generic or descriptive term “NFT” and the “.com” generic top level domain (“gTLD”). Domain names which incorporate the entire mark are usually considered confusingly similar and the addition of a generic top level domain has been deemed irrelevant per Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). Further, Adding descriptive words does not make the disputed domain name sufficiently distinct per Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). 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 that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant claims that the respondent does not have rights or legitimate interests in the <nftcoinbase.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s COINBASE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate that Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies “yue Zhang” as the registrant and no information suggests Complainant authorized Respondent to use the COINBASE mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that the Respondent does not use the domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s domain resolves to a parked website. A domain name that resolves to a parked webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides that Panel with a screenshot of Respondent’s <nftcoinbase.com> domain name that uses pay-per-click links that advertises GoDaddy services as well as other unrelated services, including competing websites. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that it is likely that Respondent is offering the domain name for sale which is not a legitimate interest. Use of a disputed domain to sell the domain name may be evidence that a respondent lacks rights or legitimate interests per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Respondent’s <nftcoinbase.com> provides a link labeled “get this domain” which goes to GoDaddy’s website offering domain brokerage services. The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <nftcoinbase.com> domain name in bad faith because it creates confusion for customers who are attempting to reach Complainant’s domain. This disrupts Complainant’s business and benefits Respondent who attracts customers using the goodwill of Complainant’s well-known COINBASE trademark. Respondent further disrupts Complainant’s business because its domain offers links for competing services. Use of a disputed domain name to disrupt a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”).
Complainant contends that it is likely that Respondent is attempting to sell the domain name which is evidence of bad faith per Policy ¶ 4(b)(i). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Respondent’s domain resolves to a website with a link labeled “Get This Domain.” This link leads to GoDaddy’s website where domain brokerage services are offered. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant alleges that Respondent must have had actual notice of Complainant's rights in the COINBASE mark prior to registration of the disputed domain name because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO. See 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 finds that Respondent had actual knowledge of Complainant’s rights in the COINBASE mark and the Panel also finds Respondent registered and uses the domain name in bad faith per Policy 4 ¶ (a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nftcoinbase.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 28, 2021
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