SmartContract Chainlink, Ltd. v. Arnold Brandon / Chain Link Global
Claim Number: FA2301002027169
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, USA. Respondent is Arnold Brandon / Chain Link Global (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chainlinklimited.com>, registered with NameSilo, 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 January 11, 2023; Forum received payment on January 11, 2023.
On January 12, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <chainlinklimited.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 January 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 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@chainlinklimited.com. Also on January 12, 2023, 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 February 7, 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.
A. Complainant
Complainant made the following contentions.
Complainant, SmartContract Chainlink, Ltd., owns and operates a blockchain network. Complainant has rights in the CHAINLINK mark, as well as related marks, through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., CHAINLINK Reg. No. 5,694,500, which was registered on March 12, 2019). See Compl. Annexes 1–4. Respondent’s <chainlinklimited.com> domain name is nearly identical to the CHAINLINK marks as it merely adds the generic term “limited” and “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <chainlinklimited.com> domain name since Respondent is not licensed or authorized to use Complainant’s CHAINLINK marks and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent previously used the domain name to impersonate Complainant. Currently, the domain name is not actively used.
Respondent registered and uses the <chainlinklimited.com> domain name in bad faith by trading off of the goodwill associated with Complainant’s CHAINLINK marks to attract users by giving a false impression of association with Complainant. Further, Respondent failed to respond to a cease-and-desist letter sent by Complainant. Lastly, Respondent registered the disputed domain name with a privacy service and actual knowledge of Complainant’s rights in the CHAINLINK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Cayman Islands company that owns and operates a blockchain network.
2. Complainant has established its rights in the CHAINLINK mark, as well as related marks, through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., CHAINLINK Reg. No. 5,694,500, which was registered on March 12, 2019).
3. Respondent registered the <chainlinklimited.com> domain name on October 13, 2022.
4. Respondent has used the disputed domain name to impersonate Complainant but it has otherwise not been actively 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CHAINLINK and related marks through trademark registrations with the USPTO (e.g., CHAINLINK Reg. No. 5,694,500, which was registered on March 12, 2019). See Compl. Annexes 1–4. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the CHAINLINK marks with the USPTO, the Panel finds that Complainant has demonstrated rights in the CHAINLINK marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHAINLINK mark. Complainant argues that the <chainlinklimited.com> domain name is identical to its CHAINLINK marks since it only adds the generic term “limited” and “.com” gTLD to the mark. When a disputed domain name wholly incorporates a mark, additional terms have been held insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable 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.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent’s domain name merely adds a generic term and gTLD, the Panel finds the <chainlinklimited.com> domain name identical or confusingly similar to Complainant’s marks under 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 CHAINLINK mark and to use it in its domain name;
(b) Respondent registered the <chainlinklimited.com> domain name on October 13, 2022;
(c) Respondent has used the disputed domain name to impersonate Complainant but it has otherwise not been actively used;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <chainlinklimited.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the CHAINLINK marks. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). If it appears that a respondent is commonly known by a disputed domain name, the Panel may still find the respondent is not commonly known as the name when the respondent fails to provide supporting evidence. See Google Inc. v. S S / Google International, FA 1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as an indication that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in 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)”); see also Navistar International Corporation v. N Rahmany, FA 1505001620789 (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). The WHOIS information for <chainlinklimited.com> lists the registrant as “Chain Link Global / Arnold Brandon.” See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the CHAINLINK marks. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent previously sought to impersonate and falsely associate itself with Complainant to deceive Internet users. Previous Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates a complainant. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Complainant provides a screenshot of what used to be the resolving site of <chainlinklimited.com>, which prominently features the CHAINLINK mark and logo in the header and throughout the site. See Compl. Annex 8. As the Panel agrees that Respondent appeared to be passing itself off as Complainant and confusing customers by mimicking Complainant’s website, the Panel finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <chainlinklimited.com> domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent is not currently making active use of the disputed domain name. A respondent’s failure to use a domain name actively does not satisfy Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot showing that the <chainlinklimited.com> domain name results in a page that states, “This site can’t be reached.” See Compl. Annex 13. The Panel therefore finds that Respondent’s failure to use the disputed domain name is additional evidence that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chainlinklimited.com> domain name under 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 formal 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 uses the <chainlinklimited.com> domain name in bad faith by capitalizing on Complainant’s fame and goodwill in the CHAINLINK marks through a confusingly similar domain name, deceiving users as to the source of the domain name. When a disputed domain name is deemed identical or confusingly similar to a mark and the mark is especially famous, well-known, or connected with a good or service, Panels have found bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv), as well as under Policy ¶ 4(b)(iii) for causing initial interest confusion. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). To demonstrate the CHAINLINK marks’ fame in the cryptocurrency and blockchain industries, Complainant provides various news articles discussing Complainant. See Compl. Annex 7. As the Panel agrees, it finds that these circumstances show that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and Policy ¶ 4(b)(iii).
Secondly, Complainant also contends that Respondent’s failure to respond to or comply with Complainant’s cease-and-desist letter evinces bad faith. Panels have agreed, holding that where a respondent ignores a complainant’s cease-and-desist letter there is support for a finding of bad faith according to Policy ¶ 4(b)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides in evidence a copy of the letter sent to Respondent. See Compl. Annex 9. The Panel therefore finds that Respondent’s failure to respond indicates that Respondent registered and uses the <chainlinklimited.com> domain name in bad faith.
Thirdly, Complainant notes that Respondent registered the disputed domain name using a privacy service. See Compl. Annex 11. Registration of a disputed domain name with a privacy service may indicate bad faith under Policy ¶ 4(b)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). As the Panel agrees, it finds this to be evidence of bad faith registration and use per Policy ¶ 4(b)(iii).
Fourthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the CHAINLINK marks when registering the <chainlinklimited.com> domain name. Actual knowledge is evidence to show bad faith under Policy ¶ 4(b)(iii). 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.”). To support its submission, Complainant points to the previous extensive use of the CHAINLINK marks and logo on the resolving site. See Compl. Annex 8. As the Panel finds that Respondent had actual knowledge of Complainant’s rights, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
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 <chainlinklimited.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 8, 2023
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