Bloq, Inc. v. Terry Ng
Claim Number: FA1807001796114
Complainant is Bloq, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Terry Ng (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metronome.foundation>, registered with Name.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2018; the Forum received payment on July 10, 2018.
On July 11, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <metronome.foundation> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 July 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@metronome.foundation. Also on July 11, 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 August 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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, Bloq, Inc., first used the METRONOME mark in October 2017 in relation to its offering of cross-block chain cryptocurrency. Complainant has rights in the METRONOME mark based upon its filing with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87855240, filed March 28, 2018). Complainant also relies on common law rights in the mark, dating back to its first use in commerce in October 2017. Respondent’s <metronome.foundation> domain name is confusingly similar to Complainant’s METRONOME mark as it incorporates the mark in its entirety and is differentiated only by the addition of the “.foundation” generic top-level domain name (“gTLD”).
Respondent has no rights or legitimate interests in the <metronome.foundation> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the METRONOME mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme and/or other illegal activity.
Respondent registered and is using the <metronome.foundation> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name to order to pass off as Complainant and engage in a phishing scheme/other illegal activity. Finally, 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.
Complainant first used the METRONOME mark in October 2017 in relation to its offering of cross-block chain cryptocurrency. Complainant has rights in the METRONOME mark for the purposes of Policy ¶ 4(a)(i) based on common law rights in the mark, dating back to its first use in commerce in October 2017. Respondent’s <metronome.foundation> domain name is confusingly similar to Complainant’s METRONOME mark.
Respondent registered the <metronome.foundation> domain name on June 9, 2018.
Respondent has no rights or legitimate interests in the <metronome.foundation> domain name. Complainant’s evidence shows that Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and is using the <metronome.foundation> 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 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 claims to have rights in the METRONOME mark through its trademark application with the USPTO. However, USPTO applications do not confer rights in a mark under Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). Complainant does provide a copy of its USPTO application for the METRONOME mark (e.g., Ser. No. 87855240, filed March 28, 2018). Therefore, Complainant’s USPTO application fails to establish rights in the METRONOME mark per Policy ¶ 4(a)(i)
Respondent registered and used the <metronome.foundation> domain name on June 9, 2018, approximately nine (9) months after Complainant’s alleged first use of the METRONOME mark in commerce. However, Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Complainant has shown that it has continuously used the METRONOME mark across a number of Internet websites, social media platforms, news articles, newsletters, and at cryptocurrency industry conferences throughout the United States. Furthermore, Complainant points to its social media platform followers and the amount of attendees at industry conferences at which Complainant’s METRONOME branded cryptocurrency offering was advertised as evidence of a secondary meaning in its mark. The Panel finds that Complainant does hold common law rights in the METRONOME mark for the purposes of Policy ¶ 4(a)(i), dating back to its first use in commerce in October 2017.
Respondent’s <metronome.foundation> domain name is confusingly similar to Complainant’s METRONOME mark as it incorporates the mark in its entirety and is differentiated only by the addition of the “.foundation” gTLD.
Respondent has no rights or legitimate interests in the <metronome.foundation> domain name. Complainant has not authorized Respondent to use the METRONOME mark. The WHOIS information of record for the <metronome.foundation> domain name lists the registrant as “Terry Ng.” Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Where a response is lacking, the WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Respondent fails to use the <metronome.foundation> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant’s evidence shows that Respondent uses the disputed domain name to pass off as Complainant and engage in a phishing scheme. Complainant provides a screenshot of the disputed domain name’s resolving website which shows a clone of Complainant’s website and prompts consumers to enter their email addresses. Use of a disputed domain name to pass off as a complainant in furtherance of phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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.”).
Respondent registered and uses the <metronome.foundation> domain name in bad faith. Complainant’s evidence shows that Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Use of a disputed domain name to pass off as a complainant and engage in a phishing scheme shows bad faith under Policy ¶ 4(a)(iv). See 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.”); see also Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”).
Respondent registered the <metronome.foundation> domain name in bad faith because it had actual knowledge of Complainant’s rights in the METRONOME mark prior to registering the disputed domain name. Registration and use of an infringing domain name with actual knowledge of a mark holder’s rights can demonstrate bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
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 <metronome.foundation> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 20, 2018
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