Coinbase, Inc. v. Guo Song Yu / ma fei wen
Claim Number: FA2209002011789
Complainant is Coinbase, Inc. (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia. Respondent is Guo Song Yu / ma fei wen (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eth-coinbase.net> and <eth-coinbase.co> 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.
Paul M. DeCicco, as Panelist.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that notwithstanding differences in the domain registration records for the at-issue domain names are nevertheless effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute were created the same way, using the same registrar and provide similar false contact information; the domain names are all used in similar. While it is possible that the domain names’ underlying registrants may or may not differ in the relevant WHOIS data, the at-issue domain names appear to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s contention that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
Complainant submitted a Complaint to Forum electronically on September 13, 2022; Forum received payment on September 13, 2022.
On September 14, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <eth-coinbase.net> and <eth-coinbase.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@eth-coinbase.net and postmaster@eth-coinbase.co. Also on September 15, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant provides an online platform for the cryptoeconomy.
Complainant asserts rights in the COINBASE mark through its registration of the mark with the United States Patent and Trademark Office (USPTO).
Respondent’s at-issue domain names are identical or confusingly similar to Complainant’s COINBASE mark as they incorporate the mark in its entirety, only adding the “ETH” abbreviation, a hyphen, and the generic top-level domains (gTLDs) “.net” and “.co”.
Respondent has no rights or legitimate interests in the at-issue domain names. Complainant has not authorized or licensed Respondent to use the COINBASE mark, nor is Respondent commonly known by either domain name. Further, Respondent is not using the domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving websites attempt to pass off as affiliated with Complainant, offering similar and competing services to those offered by Complainant.
Respondent registered and uses the at-issue domain names in bad faith. Respondent’s use of the at-issue domain names disrupts Complainant’s business and attempts to attract users for commercial gain, as Respondent offers competing services to confuse users about the association between Complainant and Respondent. Respondent also registered the domain names with actual notice of Complainant’s rights in the COINBASE mark, evidenced by the fame of the mark and Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the COINBASE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the COINBASE trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and address websites that offers services that compete with Complainant.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its COINBASE trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <eth-coinbase.net> and <eth-coinbase.co> domain names are each confusingly similar to Complainant’s COINBASE mark. The domain names each incorporate Complainant’s entire trademark and include the letters “eth” an abbreviation for Ethereum or Ether both of which terms are related to the cryptoeconomy. The “eth” are followed by hyphen. However, the meaning of the three added letters, while telling regarding other Policy ¶ 4(a) factors, is not particularly relevant to the Panel’s determination of confusing similarity under Policy ¶ 4(a)(i). The domain names are concluded with either the “.net” or the “.co” top-level domain name. The differences between the at-issue domain names and Complainant’s COINBASE trademark are insufficient to distinguish either domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <eth-coinbase.net> and <eth-coinbase.co> domain name are each confusingly similar to Complainant’s COINBASE trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue 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 at-issue domain names identifies their individual nominal registrants as “Guo Song Yu” and “ma fei wen” and record before the Panel contains no evidence that otherwise tends to show that either registrant is commonly known by one of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain names address websites designed to appear as if they are authorized by or otherwise endorsed by Complainant, when they are not. Such websites purport to provide crypto-related mining and other information solutions that are the same as or related to Complainant’s solutions offered under its COINBASE mark. On said websites Respondent conspicuously reproduces Complainant’s intellectual property such as Complainant’s COINBASE mark and logo and falsely claims that Complainant is a “business partner” of Complainant. Respondent’s use of the domain name in this manner to pass itself off as being affiliated with Complainant when it is not constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <eth-coinbase.net> and <eth-coinbase.co> domain name were each registered and used in bad faith. As discussed below without limitation, circumstance are present which permit the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses its confusingly similar domain names to address websites that mimic Complainant’s genuine website by dressing the faux sites with Complainant’s intellectual property. There, Respondent purports to offer competing services. By using the domain names in this manner Respondent disrupts Complainant’s business and attracts internet users for commercial gain thereby showing its bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (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.”); see also, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 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, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in COINBASE. Respondent’s prior knowledge is shown by the notoriety of Complainant’s COINBASE mark and by Respondent’s incorporation of the suggestive abbreviation “eth” in each at-issue domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eth-coinbase.net> and <eth-coinbase.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 11, 2022
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