Coinbase, Inc. v. tiago junior
Claim Number: FA2202001982968
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is tiago junior (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coimbaze.com>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2022; the Forum received payment on February 2, 2022.
On February 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <coimbaze.com> 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 February 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2022 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@coimbaze.com. Also on February 3, 2022, 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 February 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a leading provider of end-to-end financial infrastructure and technology for the cryptoeconomy. Complainant has rights in the COINBASE trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,567,878, registered July 15, 2014). Respondent’s <coimbaze.com> domain name is confusingly similar to Complainant’s COINBASE trademark. Respondent incorporates the trademark in its entirety and replaces the letters “N” and “S” with the “M” and “Z” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights in the <coimbaze.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the COINBASE trademark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that fails to make an active use of the domain name.
Respondent registered and used the <coimbaze.com> domain name in bad faith as Respondent attempts to confuse internet users by making use of the COINBASE trademark. Respondent fails to make an active use of the domain name. Respondent had actual knowledge of Complainant’s rights in the COINBASE trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,567,878 COINBASE (word), registered July 15, 2014 for services in Intl Class 36;
No. 4,567,879 COINBASE (word), registered July 15, 2014 for services in Intl Class 42; and
No. 4,567,877 COINBASE (word), registered July 15, 2014 for goods in Intl Class 9.
Respondent registered the disputed domain name <coimbaze.com> on May 4, 2021.
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 Complainant claims to have rights in the COINBASE trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of it USPTO registrations for the COINBASE trademark (e.g. Reg. No. 4,567,878, registered July 15, 2014). Therefore, the Panel find that Complainant has rights in the trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <coimbaze.com> domain name is confusingly similar to Complainant’s COINBASE trademark. Registration of a domain name that contains a trademark in its entirety, replaces letters and adds a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Here, Complainant argues that Respondent incorporates the trademark in its entirety and replaces the letters “N” and “S” with the “M” and “Z” - M and N as well as S and Z being placed next to each other on a standard Qwerty keyboard - along with the “.com gTLD. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Respondent lacks rights or legitimate interest in the <coimbaze.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the COINBASE trademark or register domain names using Complainant’s trademark. Where a response is lacking, 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 trademark 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 “Tiago Junior” and there is no other evidence to suggest that Respondent was authorized to use the COINBASE trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that fails to make an active use of the domain name. Failure to make an active use of a domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with a screenshot of Respondent’s <coimbaze.com> domain name that fails to resolve to an active webpage. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <coimbaze.com> domain name in bad faith as Respondent attempts to confuse internet users by making use of the COINBASE trademark. Use of a disputed domain name that makes use of a complainant’s trademark may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent makes use of a misspelled version of Complainant’s COINBASE trademark in order to confuse internet users. Therefore, the Panel agree and find that Respondent’s domain name was registered and is used in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent fails to make an active use of the domain name. Failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <coimbaze.com> domain name that fails to resolve to an active webpage. The Panel note that some traditional and common factors that are considered relevant in applying the passive holding doctrine are: a) the degree of distinctiveness and/or reputation of the complainant’s trademark, b) the failure of the respondent to submit a response (including providing evidence of contemplated good-faith use), c) the respondent’s concealing its identity or use of false contact details. All three of these factors are relevant in the present case. Therefore, the Panel find that Respondent failed to registered and use the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the COINBASE trademark at the time of registering the <coimbaze.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. Instead, the Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel therefor also find that Respondent had actual knowledge of Complainant’s right in its trademark, which support a finding of bad faith under 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 <coimbaze.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 4, 2022
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