The Optimism Foundation v. md zamil ahmed
Claim Number: FA2210002016763
Complainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, US. Respondent is md zamil ahmed (“Respondent”), BD.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optimismmining.com>, (‘the Domain Name’) registered with GMO Internet, Inc. d/b/a Onamae.com.
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 19, 2022; Forum received payment on October 19, 2022.
On October 24, 2022, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <optimismmining.com> Domain Name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 25, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@optimismmining.com. Also on October 25, 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 17, 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 has common law rights in the trade mark OPTIMISM for software and related services with first use recorded as 2019. It has a logo OP on a red circle.
The Domain Name registered in 2022 is confusingly similar to the Complainant’s trade mark containing it in its entirety and merely adding the generic term ‘mining’ and the gTLD .com which does not prevent said confusing similarity between the Domain Name and the Complainant’s mark.
Respondent is not commonly known by the Domain Name and is not authorized by the Complainant.
Respondent tries to palm off its fake “OP cloud mining” services as a legitimate service offered by Complainant by attempting to conflate Complainant’s August 2022 liquidity mining program with Respondent’s fraudulent “mining” plans. Respondent is using Complainant’s OPTIMISM Mark in an attempt to confuse unsophisticated consumers into believing they have found Complainant’s website where they can purchase OP mining plans that do not exist. The “How Optimism Works” text on Respondent’s landing page is taken verbatim from Complainant’s website, and Respondent’s “About” page text is taken verbatim from a publicly available news article about Complainant’s liquidity mining program. To pass itself off as Complainant, Respondent’s “Contact” page displays a graphic lifted from Complainant’s official website, and presents Complainant’s official domain name <optimism.io>, and one of Complainant’s official twitter handles (@OPLabsPBC) as contact information.
The web site connected with the Domain Name purports to offer competing services using the Complainant’s trade mark in its masthead. Since Internet users will be duped into believing the Respondent’s site and products offered are official this is not legitimate. It is registration and use in bad faith diverting internet users for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant has common law rights in the trade mark OPTIMISM for software and related services with first use recorded as 2019. It has a logo OP on a red circle.
The Domain Name registered in 2022 purports to offer competing services using the Complainant’s OPTIMISM mark in its masthead and the Complainant’s logo, website and Twitter details and material copied from the Complainant’s web site to present the Respondent’s web site as connected with the Complainant when it is not. Since the services offered by the Respondent are not possible in relation to the Complainant’s software the Respondent’s services appear to be fake and fraudulent.
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 Domain Name consists of the Complainant's OPTIMISM mark (in which the Complainant owns common law rights for software and related services with first use recorded as 2019), the generic term ‘mining’ and the gTLD .com.
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 ‘mining’ to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD .com does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark
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 mark. 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).The use of the web site is commercial so is not legitimate noncommercial fair use.
The web site attached to the Domain Name purports to offer competing services to the Complainant and uses the Complainant's mark in its masthead, the Complainant’s logo, website and Twitter details and material copied from the Complainant’s web site to suggest it is connected with the Complainant. The services offered by the Respondent are not possible in relation to the Complainant’s software, but seeks to deceive Internet users who are not sufficiently knowledgeable to be aware of this. The Panel finds this use is deceptive and fraudulent. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.) see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Previous Panels have noted that offering fake services does not constitute a bona fide offer or a legitimate noncommercial or fair use under Policy 4(c)(i) and (iii). See Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of domain name). The offering of fake services suggests the site is involved in fraudulent activity which cannot be legitimate use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’).
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 a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it purports to offer competing services to the Complainant using the Complainant’s mark in its masthead, the Complainant’s logo, website and Twitter details and material copied from the Complainant’s web site.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
Further the Respondent is passing itself off as the Complainant and the services offered are not possible in relation to the Complainant’s software and so appear to be fake services. The offering of fake services fraudulently also indicates bad faith. See 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). Fraudulent activity is bad faith per se. See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
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) and (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 <optimismmining.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 21, 2022
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