The Optimism Foundation v. Anastasia Semenov
Claim Number: FA2212002025625
Complainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Anastasia Semenov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optimismbridge.com>, registered with Registrar of Domain Names REG.RU 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 28, 2022; Forum received payment on December 28, 2022.
On December 29, 2022, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <optimismbridge.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 December 29, 2022, Forum served the Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of January 18, 2023 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@optimismbridge.com. Also on December 29, 2022, the Russian and English language 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 January 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings to be Russian. However, Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has a discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding and, if it so determines, to find pursuant to Rule 11(a) that another and more appropriate language should be the language of the proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Russian language and it would require delay and unnecessary costs to translate the documents into Russian.
Having regard to all of those circumstances, the Panel finds pursuant to Rule 11( a) that the proceeding should be conducted in the English language and that the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, The Optimism Foundation, is a global leader in facilitating fair access to the blockchain, and to other financial transactions on the Internet, with an open-source software. Complainant submits that it has rights in the OPTIMISM mark through its application for registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Ser. No. 90,549,900 filed February 26, 2021). See Compl. Annex 2. Complainant further submits that it has common law rights in the mark. Respondent’s <optimismbridge.com> domain name is identical or confusingly similar to Complainant’s OPTIMISM mark because it wholly incorporates the mark and adds the generic word “bridge”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <optimismbridge.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the OPTIMISM mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Rather, Respondent uses Complainant’s OPTIMISM mark in the disputed domain name in order to impersonate Complainant.
Respondent registered and uses the <optimismbridge.com> domain name in bad faith. Respondent uses the disputed domain name in order to pass itself off as Complainant. Furthermore, Respondent had knowledge of Complainant’s rights in the OPTIMISM mark prior to registration of the disputed domain name. Lastly, Respondent’s bad faith may be demonstrated by its use of a privacy service when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States entity that is a global leader in facilitating fair access to the blockchain, and to other financial transactions on the Internet, with an open-source software.
2. Complainant has established its common law trademark rights in the OPTIMISM mark.
3. Respondent registered the disputed domain name on November 18, 2022.
4. Respondent uses Complainant’s OPTIMISM mark in the <optimismbridge.com> disputed domain name in order to impersonate Complainant and thereby to pass itself off as 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”).
Complainant thus further submits that it has rights in the OPTIMISM mark based upon the common law. Common law use of a mark may be a valid showing of rights pursuant to Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Demonstration of common law rights in a mark requires a showing the trademark has acquired secondary meaning in the minds of consumers. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant contends that it has made continuous and widespread use of the OPTIMISM mark in commerce since 2019 and has garnered media recognition in that regard. See Compl. Annexes 1 and 4. Complainant further contends that Complainant’s first use of the mark and USPTO trademark application filing predate the registration of the disputed domain name. See Annexes 2 and 3. As the Panel agrees, it finds that Complainant has common law trademark rights in the OPTIMISM mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OPTIMISM mark. Complainant argues that Respondent’s <optimismbridge.com> domain name is identical or confusingly similar to Complainant’s OPTIMISM mark. Under Policy ¶ 4(a)(i), fully incorporating a mark in its entirety and adding a generic or descriptive word fails to distinguish sufficiently a domain name from a registered mark. 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.”). Further, the addition of the “.com” gTLD is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected mark. See Contrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Respondent’s <optimismbridge.com> domain name wholly incorporates the OPTIMISM mark and adds the generic word “bridge”, as well as the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OPTIMISM mark and to use it in its domain name, adding the word “bridge” to the mark, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the domain name on November 18, 2022;
(c) Respondent uses Complainant’s mark in the <optimismbridge.com> domain name in order to impersonate Complainant and thereby to pass itself off as Complainant.;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <optimismbridge.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the OPTIMISM mark. Under Policy ¶ 4(c)(ii), information in the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM , FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent shielded its identity in the disputed domain name’s WHOIS information. See Compl. Annex 3. However, the Registrar, Registrar of Domain Names REG.RU LLC., revealed the Respondent as “Anastasia Semenov.” See Registrar Verification Email. Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s OPTIMISM mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <optimismbridge.com> domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Impersonating a complainant at a confusingly similar domain name’s resolving webpage is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Complainant provides evidence of the <optimismbridge.com> domain name resolving to a website which impersonates Complainant through the use of Complainant’s OPTIMISM mark and logo and attempts to copy Complainant’s own webpage. Compare Compl. Annex 5 with Compl. Annex 6. As the Panel agrees, it finds that Respondent does not use the <optimismbridge.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <optimismbridge.com> domain name to attract Internet users with a false impression of association with Complainant. Use of a disputed domain name to imitate a complainant’s website can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant’s attached screenshots of the disputed domain name, which attempt to pass off Respondent as Complainant with a copy of Complainant’s official webpage and displays Complainant’s mark. Compare Compl. Annex 5 with Compl. Annex 6. As the Panel agrees, it finds that Respondent registered and uses the <optimismbridge.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered the <optimismbridge.com> domain name with constructive and actual knowledge of Complainant’s rights in the OPTIMISM mark. The Panel may disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. 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.”). Nonetheless, actual notice may be determined by looking at the respondent’s specific use of the mark, such as to impersonate the complainant. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant’s OPTIMISM mark is entirely incorporated in Respondent’s <optimismbridge.com> domain name. Respondent uses the disputed domain name’s resolving webpage in order to impersonate Complainant. See Compl. Annex 5. Therefore, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in the OPTIMISM mark under Policy ¶ 4(a)(iii) when it registered the domain name.
Thirdly, Complainant notes that Respondent appears to have registered the <optimismbridge.com> domain name using a privacy shield. Use of false or misleading WHOIS information, including the use of a privacy shield, suggests bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, the Complainant provides evidence that Respondent makes use of a privacy shield. See WHOIS information; see also Compl. Annex 3. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith.
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OPTIMISM mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <optimismbridge.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 24, 2023
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