Bloq, Inc. v. Domain Manager / currency evolution
Claim Number: FA1808001802328
Complainant is Bloq, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Domain Manager / currency evolution (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2018; the Forum received payment on August 20, 2018.
On August 21, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2018 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@metronomeblockchain.com, postmaster@metronomecoins.com, postmaster@metronomecurrency.com, postmaster@metronomeexchange.com, postmaster@metronomepayments.com, postmaster@metronometokens.com, postmaster@metronomewallet.com. Also on August 22, 2018, 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 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
Complainant, Bloq, Inc., specializes in block chain solutions for businesses. In connection with this business, Complainant offers its Metronome cryptocurrency. Complainant has common law rights in the METRONOME mark based on advertising expenditures, media attention, and consumer goodwill. Complainant also has a pending U.S. federal trademark application to register its mark. Respondent’s <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com> domain names are confusingly similar to Complainant’s METRONOME mark because they all incorporate the mark in its entirety while adding a generic or descriptive term (“block chain, “”coins,” “currency,” “exchange,” “payments,” “tokens,” or “wallet”) and a “.com” generic top-level domain (“gTLD”) to the mark.
Respondent lacks rights and legitimate interests in the <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com> domain names. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect users to another website that directly competes with Complainant’s business.
Respondent registered and uses the <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website that redirects users to another competing website. Further, Respondent had actual knowledge of Complainant’s rights in the METRONOME mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes all the disputed domain names were registered on or about October 24, 2017.
Complainant is Bloq, Inc. (“Complainant”), of Chicago, IL, USA. Complainant claims common law rights in the mark METRONOME, based on its continuous use since at least as early as October 23, 2017, in relation to its provision of goods and services related to cross-blockchain cryptocurrency.
Respondent is Domain Manager / currency evolution (“Respondent”), of Cincinnati, OH, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain names on or about October 24, 2017.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant primarily asserts common law rights in the METRONOME mark, dating back to its first use of the mark in commerce in October of 2017. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). Here, Complainant provides screenshots of seventeen online articles about Metronome screenshots of its social media, articles profiling its attendance at cryptocurrency industry conferences, and screenshots of its website at its <metronome.io> domain name. The Panel notes that the articles do provide some evidence of time of use, however, that time of use is relatively short. The articles cover the time of represented first use to the present, which is less than a year, thus any media recognition or promotional use is recent at best. The Panel here finds that the articles are insufficient to determine Complainant has common law rights in the METRONOME mark per Policy ¶ 4(a)(i).
Complainant also points out that it owns a pending trademark application with the United States Patent and Trademark Office (“USPTO”). A pending trademark application, however, is insufficient to establish rights under Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Here, Complainant provides its application (e.g., App. No. 87,614,737) with the USPTO to register its METRONOME mark. The Panel here finds Complainant’s pending USPTO application insufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complaint states in its Complaint, and in accompanying evidence, that its first use of the mark METRONOME was at least as early as October 23, 2017. Complainant also recognizes that Respondent’s registration of the disputed domains took place on or about October 24, 2017.Complainant cannot be understood to have established any common law rights in the mark one day prior to Respondent’s registration. Nor can claimed common law rights be based on Complainant’s usage of its mark subsequent to Respondent’s registration and use of the disputed domain names. As previously noted, in order to have common law rights, a complainant must establish secondary meaning. Relevant evidence of secondary meaning can include length of use of a mark, owning an identical domain name and media recognition. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (“Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created . . . Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). The Panel notes that in the instant case, Complainant’s evidence of length of use, its registration of a domain name, and establishment of a website do not occur before the disputed domain names were created, and the mark’s first use in commerce is only one day prior to registration of those domains.
Further, Complainant’s domain name registration at <metronome.io> alone establishes no protectable trademark rights. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate length and amount of sales under its mark, the nature and extent of advertising, and consumer association through surveys and media recognition. Complainant’s evidence here is lacking in all of those necessary details, as well as in the essential timing required to sustain its case. Additionally, Complainant’s counsels affidavit in support of Complainant’s claims to having established common law rights in the mark is merely self-serving and therefore insufficient under the policy.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Complainant has NOT proven this element.
The Panel declines to analyze this element.
The Panel declines to analyze this element.
DECISION
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <metronomeblockchain.com>, <metronomecoins.com>, <metronomecurrency.com>, <metronomeexchange.com>, <metronomepayments.com>, <metronometokens.com>, and <metronomewallet.com> domain names
REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: Sept. 28, 2018
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