SmartContract Chainlink, Ltd. v. black kingkong
Claim Number: FA2210002016172
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona, USA. Respondent is black kingkong (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartcontractz.cc>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on October 14, 2022; Forum received payment on October 14, 2022.
On October 15, 2022, NameSilo, LLC confirmed by e-mail to Forum that the <smartcontractz.cc> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@smartcontractz.cc. Also on October 18, 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 November 9, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark SMARTCON in the USA for conference organization and services relating to decentralized computer technologies used since 2020. The trade mark SMARTCONTRACT has been used for conference services by the Complainant since at least 2021.
Respondent registered the Domain Name in 2022 a month after Complainant filed the SMARTCON U.S. trademark application. The Domain Name is confusingly similar to the Complainant’s SMARTCON and SMARTCONTRACT trademarks. Adding ‘tract’, a single letter ‘z’ and/or a ccTLD .cc does not avoid said confusing similarity.
Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant.
The Domain Name has not been used which is not a bona fide offering of goods and services or a legitimate noncommercial fair use. The Respondent does not have rights or a legitimate interest in the Domain Name.
The registration of the Domain Name one month after the Complainant applied for its registration for its SMARTCON mark shows that the Respondent was aware of the Complainant and its rights at the time of registration of the Domain Name. Passive holding of a domain name containing a third party mark with a reputation is bad faith registration and use. The Respondent has not answered a cease and desist letter from the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark SMARTCON in the USA for conference organization and services relating to decentralized computer technologies used since 2020. The trade mark SMARTCONTRACT has been used for conference services by the Complainant since at least 2021.
Respondent registered the Domain Name a month after Complainant filed the SMARTCON U.S. trademark application. The Domain Name has not been used.
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 owns the trade mark SMARTCON registered in the USA for conference organization and services relating to decentralized computer technologies with first use recorded as 2020. SMARTCONTRACT has been used by the Complainant for conference related services since 2021.
The Respondent registered the Domain Name one month after Complainant filed an application in the USPTO for the mark SMARTCON. The Domain Name is confusingly similar to the Complainant’s trademarks. Specifically, in relation to the Complainant’s registered mark adding ‘tract’, the single letter ‘z’ and the ccTLD .cc.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel holds that the addition of the generic term ‘tract’ to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s registered mark.
The addition of a single letter does not prevent of using similarity between a trade mark and a domain name. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel agrees that the addition of the single letter ‘z’ to the Complainant's marks does not distinguish the Domain Name from the Complainant's trademarks pursuant to the Policy.
A ccTLD does not serve to distinguish a Domain Name from a Complainant’s mark. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark”).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s marks, specifically to its registered SMARTCON mark for the purposes of the Policy.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.>>
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
There has been no use of the Domain Name. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
The Respondent has not answered this Complaint or offered any explanation to rebut the prima facie case presented by the Complainant above.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The timing of the registration of the Domain Name one month after Complainant filed an application in the USPTO for the mark SMARTCON and the failure of the Respondent to answer the allegations of the Complainant makes it more likely than not that the Domain Name has been registered in opportunistic bad faith.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(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 <smartcontractz.cc> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 10, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page