Blockfolio, LLC v. Daniel Farnsworth / UK RESELL
Claim Number: FA1908001856391
Complainant is Blockfolio, LLC (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Daniel Farnsworth / UK RESELL (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coinsblockfolio.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coinsblockfolio.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 August 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@coinsblockfolio.com. Also on August 14, 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.
A timely Response was received and determined to be complete on August 14, 2019.
On August 15, 2919, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the trademark BLOCKFOLIO in connection with providing financial information, particularly regarding Bitcoin and other cryptocurrencies. Complainant has common-law and statutory rights in the BLOCKFOLIO mark through its use in commerce dating back to 2015 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2017. Respondent’s <coinsblockfolio.com> domain name, registered on June 6, 2019, is identical or confusingly similar to Complainant’s mark as it includes the entirety of Complainant’s mark and adds the generic and descriptive term “coins” and the “.com” top-level domain.
Respondent lacks rights or legitimate interests in the <coinsblockfolio.com> domain name as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the mark. Respondent also 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. Instead, Respondent uses the <coinsblockfolio.com> domain name to divert consumers of Complainant’s good and services to the website of the disputed domain name for commercial gain.
Respondent registered and uses the <coinsblockfolio.com> domain name in bad faith. Respondent uses the confusingly similar disputed domain name to take unfair advantage of consumer confusion with Complainant’s mark and draw Internet users to the disputed domain name’s website for commercial gain. Respondent was aware of Complainant’s trademark rights at the time of registration based on the widespread reputation of the BLOCKFOLIO mark and the fact that it is an arbitrary, coined term operating in the same field as Respondent’s use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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.
Complainant asserts rights in the BLOCKFOLIO mark based on common-law as well as its registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”) As Complainant submits a copy of its USPTO registration into evidence, the Panel finds that it has established rights in the BLOCKFOLIO mark for the threshold purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <coinsblockfolio.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the entirety of Complainant’s mark and adds the generic and descriptive term “coins” and the “.com” top-level domain. The addition of generic or descriptive terms and a generic top-level domain is insufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Of course, it is well-accepted that the “.com” gTLD almost always does nothing to impact the meaning of a disputed domain name, it may be disregarded in this case. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). As the second level of the disputed domain name adds only the prefix “coins” to Complainant’s BLOCKFOLIO mark, and as this word is particularly applicable to Complainant’s activities in the field of cryptocurrencies and crypto exchanges, the Panel finds that the <coinsblockfolio.com> domain name is confusingly similar to the BLOCKFOLIO mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 lacks rights or legitimate interests in the <coinsblockfolio.com> domain name as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the mark. WHOIS information may be used to inform a Panel’s determination of whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name lists the registrant as “Daniel Farnsworth,” and there is no evidence to suggest that Respondent is known otherwise or that it was authorized to use the BLOCKFOLIO mark. Therefore, in the absence of a Response or other submission from the Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that 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 as Respondent uses the <coinsblockfolio.com> domain name to divert consumers of Complainant’s good and services to the disputed domain name for commercial gain. Use of a confusingly similar domain name to divert internet users to a disputed domain name and offer competing goods or services may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”) Complainant successfully argues that the disputed domain name is confusingly similar to Complainant’s mark and the screenshot of Respondent’s website that has been submitted into evidence shows that Respondent offers services of to providing information related to Bitcoin and other cryptocurrencies – essentially the same as those offered by Complainant. Finally, the prominent appearance of the phrase “Coins Blockfolio” at the top of Respondent’s website does not, without more, indicate that rights or legitimate interests are present. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Therefore, the Panel agrees with Complainant and finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent was aware of Complainant’s trademark rights at the time of registration based on the widespread reputation of the BLOCKFOLIO mark and the fact that it is an arbitrary, coined term operating in the same field as Respondent’s use of the disputed domain name. Panels have consistently found that actual knowledge of a Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant provides a copy of its trademark registration for the BLOCKFOLIO mark and copies of numerous articles outlining the notoriety of the mark (e.g., one is titled “The Best Cryptocurrency Trading Apps: Coinbase, Blockfolio And More”). Further, Respondent’s use of the <coinsblockfolio.com> domain name at its website relating to cryptocurrencies and crypto exchanges strongly suggests its familiarity with Complainant and its arbitrary/coined BLOCKFOLIO mark. Therefore, the Panel finds it to be highly likely that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name, thus forming a solid foundation upon which to support further evidence of bad faith registration per Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and uses the <coinsblockfolio.com> domain name in bad faith as Respondent is using the confusingly similar domain name to take unfair advantage of consumer confusion with Complainant’s mark and draw Internet users to the its website for commercial gain. Using a disputed domain name to diverting Internet users searching for a complainant’s website can demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The panel notes that Complainant provides a screenshot of the <coinsblockfolio.com> webpage and this page displays a number of monetized advertisements. In the absence of a Response or other explanatory submission by the Respondent, the Panel finds that this website uses the confusingly similar <coinsblockfolio.com> domain name to attract users to its website for commercial gain. As such, it is concluded that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coinsblockfolio.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 16, 2019
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