Chia Network Inc. v. Dan Mueller
Claim Number: FA2108001961469
Complainant is Chia Network Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Dan Mueller (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogechia.org>, registered with NameCheap, 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2021; the Forum received payment on August 27, 2021.
On August 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <dogechia.org> 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 August 31, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2021 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@dogechia.org. Also on August 31, 2021, 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 September 20, 2021.
On September 21, 2021, an Additional Submission was received from the Respondent.
On September 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Petillion as Panelist.
On September 28, 2021, an Additional Submission was received from the Complainant.
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.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS
Both parties made an Additional Submission beyond the initial Complaint and Response.
Forum Supplemental Rule 7 gives the Panel complete discretion on whether to accept any late-filed materials. Although the Panel has the right to request additional materials, the parties have no right to submit additional materials absent the Panel’s agreement. Rule 12; Forum Supplemental Rule 7.
The Panel notes that both Additional Submissions are short and do not undermine a rapid review of the dispute. Therefore, the Panel decides to accept both Additional Submissions for the sake of fairness.
A. Complainant
Complainant is Chia Network Inc. Complainant has rights in the CHIA mark based upon various registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,428,600 registered July 20, 2021) and with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 017930981 registered December 14, 2018). See Compl. Annexes 4 and 5. Respondent’s <dogechia.org> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the CHIA mark in its entirety and merely adds the term “doge” and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <dogechia.org> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the CHIA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page offering competing goods.
Respondent registered and uses the <dogechia.org> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHIA mark.
B. Respondent
Respondent is an independent individual. Respondent contends that the disputed domain name is comprised of generic terms.
Respondent has legitimate rights and interests in the disputed domain name. Respondent contends that the disputed domain name is used in fair use. Further, Respondent includes a disclaimer on the first page of the website linked to the disputed domain name. Additionally, Respondent argues terms are generic and descriptive.
Respondent argues the disputed domain name is not used in bad faith because Respondent does not offer the domain name for sale. Finally, Respondent does not have a pattern of bad faith registration, has not registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and does not offer any commercial services on the website linked to the disputed domain name.
C. Additional Submissions
In its Additional Submission of September 21, 2021, Respondent indicates that he also registered the domain name <dogechia.farm> on the same day he registered the disputed <dogechia.org> domain name.
In its Additional Submission of September 28, 2021, Complainant contests the Respondent’s claims regarding the generic meaning of the term “chia”. Complainant also states that it does not utilize the CHIA mark generically.
Complainant, Chia Network Inc., operates a cryptocurrency platform and offers related goods and services. Complainant has rights in the CHIA mark based upon various registrations, including in the United States where the Respondent is located (e.g. Reg. No. 6,428,600 registered with the USPTO on July 20, 2021). See Compl. Ex. 4.
The <dogechia.org> domain name was registered on June 22, 2021. See WhoIs Information. The disputed domain name refers to a website promoting a so-called “fork” or alternative software linked to the Complainant’s cryptocurrency, and offering related software downloads.
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 CHIA mark based upon the registration with the USPTO (e.g., Reg. No. 6,428,600 registered July 20, 2021). See Compl. Annex 4 Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant also provides evidence of earlier registrations of the CHIA mark in other territories such as the European Union (e.g., Reg. No. 017930981 registered December 14, 2018). Therefore, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent’s <dogechia.org> domain name contains the Complainant’s CHIA mark in its entirety and adds the term “doge” and the “.org” gTLD. Both parties provide different meanings for the term “doge” but in any event, the Panel finds that this addition fails to sufficiently distinguish the disputed domain name from the Complainant’s mark per 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). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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), 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 or legitimate interests in the <dogechia.org> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the CHIA mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding 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 “Dan Mueller,” and there is no other evidence to suggest that Respondent was authorized to use the CHIA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <dogechia.org> domain name redirects to another site offering competing goods and services. Where the respondent uses a disputed domain name to redirect users to another site offering competing goods and services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, the disputed domain name refers to a website promoting a so-called “fork” or alternative software linked to the Complainant’s cryptocurrency, and offering related software downloads.
In view of the above, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent claims it has a legitimate interest and is making nominative fair use of the <dogechia.org> domain name for several reasons:
- Complainant’s President and Chief Operating Officer would have said in a video that it was permissible to use the word “chia” if it wasn’t the first word in the domain name;
- “chia” has become a generic term for a type of blockchain technology;
- Respondent has no financial interests and does not offer any products or services for sale;
- Respondent includes a disclaimer on the website linked to the disputed domain name.
With regard to the first reason listed above, the Panel observes that the video to which Respondent refers does not include any statement on the use of the CHIA mark in domain names. It only provides guidance on the use of the CHIA mark in the context of mining pools of the CHIA cryptocurrency. Therefore, the Panel finds that Respondent misrepresented the statements made and could not derive any right of legitimate interest from it to register the disputed domain name.
After review of the evidence provided by both parties, the Panel does not find that the CHIA mark is used as a generic term, but rather refers to Complainant’s cryptocurrency.
Respondent further states that it has no financial interests in registering and/or using the disputed domain name. However, the Panel finds that Respondent benefits from the use of Complainant’s CHIA mark to promote alternative software linked to Complainant’s cryptocurrency. Commercial gain may include the respondent gaining or seeking reputational and/or bargaining advantage, even where such advantage may not be readily quantified. See section 2.5.3 of the WIPO Overview 3.0.
Respondent’s use of a disclaimer will be addressed under the third element of the Policy below.
Finally, where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. In this case, the disputed domain name incorporates Complainant’s CHIA trademark in its entirety and adds the term “doge”, which can have different meanings but also refers to cryptocurrency. In view of Complainant’s cryptocurrency services, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant. The Panel therefore concludes that Respondent has no rights or legitimate interests in the <dogechia.org> domain name.
Complainant argues that Respondent had knowledge of Complainant’s rights in the CHIA mark at the time of registering the <dogechia.org> domain name. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark may support a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). See also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). See also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In the present case, the Panel observes that the disputed domain name includes Complainant’s CHIA mark in its entirety, and that the website linked to disputed domain name makes a direct reference to the Complainant’s CHIA cryptocurrency. Respondent does not dispute the fact that Complainant is the owner of the CHIA mark. The Panel therefore finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <dogechia.org> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); See also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); See also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As previously mentioned, the disputed domain name refers to a website promoting a so-called “fork” or alternative software linked to the Complainant’s cryptocurrency, and offering related software downloads. In the circumstances of this case, the Panel finds that Respondent’s use of the Complainant’s CHIA mark can deceive Internet users in regard to the source or affiliation of the domain name, which is a further indication of bad faith per Policy ¶ 4(a)(iii).
Where the overall circumstances of a case point to a respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. See section 3.7 WIPO Overview 3.0. Here, the Panel finds that the use of a disclaimer on the website linked to the disputed domain name cannot cure Respondent’s bad faith. The disputed domain name itself causes a risk of confusion of Internet users, even before these users access the website linked to the disputed domain name.
The Panel therefore concludes that Respondent has registered and uses the <dogechia.org> domain name in bad faith per 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 <dogechia.org> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: October 6, 2021
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