Coinbase, Inc. v. Jan Everno
Claim Number: FA2202001983493
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Jan Everno (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <procoinbase.com>, registered with ! #1 Host Japan, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2022; the Forum received payment on February 7, 2022.
On February 10, 2022, ! #1 Host Japan, LLC confirmed by e-mail to the Forum that the <procoinbase.com> domain name is registered with ! #1 Host Japan, LLC and that Respondent is the current registrant of the name. ! #1 Host Japan, LLC has verified that Respondent is bound by the ! #1 Host Japan, 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 February 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2022 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@procoinbase.com. Also on February 11, 2022, 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 March 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant engages and offers a platform to access the cryptoeconomy and for users to invest, store, spend, earn, and use cryptocurrency. Complainant asserts rights in the COINBASE mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 4,567,878, registered on July 15, 2014). The disputed domain name is identical or confusingly similar to Complainant’s COINBASE mark as it incorporates the mark in its entirety, only adding the generic term “pro” and the “.com” generic top-level domain (gTLD).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the COINBASE mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name’s resolving website attempts to pass off as Complainant. Additionally, the resolving website redirects users to third-party competing businesses and engages in a phishing scheme. Finally, the disputed domain name is apparently for sale.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name is for sale, which indicates bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant. Further, Respondent disrupts Complainant’s business by redirecting users to a resolving website that engages in a phishing scheme and hosts competing third-party links. Finally, Respondent had actual notice of Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 1, 2020.
2. Complainant has established rights in the COINBASE mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 4,567,878, registered on July 15, 2014).
3. The disputed domain name is offered for sale to the general public.
4. Respondent attempts to attract users for commercial gain by passing off as Complainant.
5. The disputed domain name redirects users to a resolving website that engages in a phishing scheme and hosts competing third-party links.
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 asserts rights in the COINBASE mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,567,878, registered on July 15, 2014). When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has established rights in the COINBASE mark.
Complainant also argues the disputed domain name <procoinbase.com> is identical or confusingly similar to Complainant’s COINBASE mark, as it incorporates the mark in its entirety, only adding the generic term “pro”, which relates to Complainant’s business, and the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a mark. See 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.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s COINBASE mark.
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”).
Complainant contends Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized to use the COINBASE mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information lists Respondent as “Jan Everno” and there is no evidence to suggest Complainant authorized Respondent to use the COINBASE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant at the resolving website. Using a disputed domain name to pass off as a complainant is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also 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.”). Here, Complainant provides screenshots of Complainant’s legitimate website and Respondent’s resolving website. The Panel agrees Respondent attempts to pass off as Complainant, and thus it finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
Further, Complainant asserts Respondent redirects users to third-party hyperlinks that compete with Complainant’s business. When a respondent uses a disputed domain name to host third-party links that relate to competing businesses, the Panel may find the respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). In the present case, Complainant presents evidence that users are presented with competing hyperlinks to third-party websites. Therefore, the Panel finds Respondent does not use the disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii).
Similarly, Complainant states Respondent engages in a phishing scheme, which is not a bona fide offering of goods and services. Past panels have agreed that hosting a disputed domain name to try and fraudulently obtain personal and financial information from users is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Here, the Panel notes from the screenshots of the disputed domain name’s resolving website that Respondent engages in a phishing scheme, and thus it finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
Finally, Complainant contends the disputed domain name is for sale, further evidencing Respondent does not use the disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii). Using a disputed domain name to offer it for sale is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). In this case, Complainant attaches evidence that Respondent is offering the disputed domain name for sale to the general public. Therefore, the Panel finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant first asserts Respondent offers the disputed domain name for sale, evidencing bad faith. Past panels have continuously agreed that offering a disputed domain name for sale indicates bad faith. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Here, the Panel notes Complainant’s evidence of the disputed domain name for sale to the general public. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith.
Furthermore, Complainant contends Respondent attempts to attract users for commercial gain by passing off as Complainant. Using a disputed domain name to confuse users about the association between two parties, especially by imitating a complainant’s website to pass off as them, may show bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel refers to screenshots of the disputed domain name’s resolving website and those of Complainant’s legitimate website, and as a result it finds that Respondent attempts to pass off as Complainant and financially to benefit from the confusion. The Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Complainant also states Respondent disrupts Complainant’s business by redirecting users to a website that has competing links and a phishing scheme. If a respondent uses a disputed domain name to disrupt a complainant’s website, a panel may find bad faith. 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.”); see also Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii)).
The Panel notes that the disputed domain name’s resolving website shows it redirects users to a phishing scheme and competing hyperlinks. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith.
Finally, Complainant argues Respondent had actual notice of Complainant’s rights in the COINBASE mark, evidenced by the fame of the mark and Respondent’s use to host competing hyperlinks. Complainant provides evidence of the fame and notoriety of Complainant’s COINBASE mark, as well as screenshots to Respondent’s website that redirects users to competing services. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the COINBASE mark at the time of registering the disputed domain name, which supports Respondent’s bad faith registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <procoinbase.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 11, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page