The Maker Ecosystem Growth Foundation v. Justin Carter / Universal Soft Tech
Claim Number: FA1904001839139
Complainant is The Maker Ecosystem Growth Foundation (“Complainant”), represented by Jennette Wiser of Nixon Peabody LLP, Illinois, USA. Respondent is Justin Carter / Universal Soft Tech (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makerdao.biz>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2019; the Forum received payment on April 17, 2019.
On April 17, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <makerdao.biz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 April 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2019 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@makerdao.biz. Also on April 22, 2019, 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 May 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <makerdao.biz> domain name is confusingly similar to Complainant’s MAKERDAO mark.
2. Respondent does not have any rights or legitimate interests in the <makerdao.biz> domain name.
3. Respondent registered and uses the <makerdao.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Maker Ecosystem Growth Foundation, uses their marks MAKER, DAI, and MAKERDAO in connection with financial services. Complainant holds a registration for the MAKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,631,414, registered Dec. 18, 2018) and for the MAKERDAO mark with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 17,890,977, registered Oct. 4, 2018).
Respondent registered the <makerdao.biz> domain name on January 7, 2019, and uses it to pass itself off as Complainant and to conduct a phishing scheme.
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”).
The Panel finds that Complainant’s registration of the MAKERDAO mark with the EUIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). The Panel notes that while Complainant provides a copy of its USPTO certificate, it does not provide a EUIPO registration for the MAKERDAO but merely a chart of its registrations.
Respondent’s <makerdao.biz> domain name uses the entire MAKERDAO mark and merely adds the gTLD “.com”. The addition of a gTLD does not distinguish a domain name from a mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel thus finds that Respondent’s <makerdao.biz> domain name is confusingly similar to Complainant’s MAKERDAO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the <makerdao.biz> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the MAKERDAO mark in any way. The WHOIS information of record identifies the owner of the disputed domain name as “Justin Carter / Universal Soft.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <makerdao.biz> domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <makerdao.biz> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant shows that the website associated with the disputed domain name mirrors Complainant’s own website, using Complainant’s marks and video and other content, in an effort to solicit payments from users. The use of a domain name to pass off as a complainant for fraudulent purposes is not a bona fide offering of goods and services or a legitimate or noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Panel therefore finds that Respondent does not have rights or legitimate interests in the <makerdao.biz> domain name under 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.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is indicated by its use of the <makerdao.biz> domain name to pass itself off as Complainant for its own gain. The Panel agrees and finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(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.”).
Complainant further asserts that Respondent’s bad faith is demonstrated by its attempt to disrupt Complainant’s business by using the <makerdao.biz> domain name to offer similar, competing services. The Panel agrees and finds that this use demonstrates that Respondent is using the disputed domain name in bad faith under both Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent’s bad faith is demonstrated by its knowledge of Complainant’s rights in the MAKER marks prior to registering the <makerdao.biz> domain name. In support, Complainant points to Respondent’s use of Complainant’s video content and the MAKER and MAKERDAO marks. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in the MAKERDAO mark, which constitutes bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
The Panel finds that 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 <makerdao.biz> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 16, 2019
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