The Optimism Foundation v. Sicens Browns
Claim Number: FA2302002030200
Complainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, California. Respondent is Sicens Browns (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optimism-coin.com>, registered with NameCheap, Inc..
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 February 1, 2023; Forum received payment on February 1, 2023.
On February 1, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <optimism-coin.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 February 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@optimism-coin.com. Also on February 2, 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 March 1, 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, The Optimism Foundation, develops open-source software used in conjunction with the Ethereum blockchain to facilitate fair access to the blockchain and to other financial transactions on the internet. Complainant asserts common law rights in the OPTIMISM mark based upon continuous and widespread use, as well as, widespread recognition. Respondent’s <optimism-coin.com> domain name is confusingly similar to Complainant’s OPTIMISM mark as it merely adds the generic term “-coin” and the generic top-level domains (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <optimism-coin.com> domain name. Respondent is not licensed or authorized to use Complainant’s OPTIMISM mark 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. Instead, Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <optimism-coin.com> domain name in bad faith. Respondent uses the disputed domain names to pass off as Complainant. Additionally, Respondent’s use of a privacy shield shows bad faith registration. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the OPTIMISM mark.
Respondent registered the <optimism-coin.com> domain name on December 17, 2022.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a Cayman Islands company engaged in the development of open-source software used in conjunction with the Ethereum blockchain to facilitate fair access to the blockchain and to other financial transactions on the internet.
2. Complainant has established its common law rights to the OPTIMISM trademark under Policy ¶ 4(a)(i) based on its continuous and widespread use and widespread recognition of the mark and that it acquired that trademark at least by 2020.
3.Respondent registered the <optimism-coin.com> domain name on December 17, 2022.
4. Respondent has caused the disputed domain name to be used 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”).
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 common law rights in the OPTIMISM mark based upon continuous and widespread use of the mark, as well as, widespread recognition. Registration of a mark with a trademark agency is not required by Policy ¶ 4(a)(i) if complainant has established common law rights in the mark prior to a respondent’s registration of the disputed domain name. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
A showing of longstanding use, evidence of holding an identical domain name, significant good will, and media recognition is evidence of the mark acquiring sufficient secondary meaning required to demonstrate common law rights in the mark. 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 registered its own <optimism.io> domain name on May 19, 2015, first began using the OPTIMISM mark in commerce in 2020 and has provided evidence of media recognition. See Compl. Annex 1-2; Compl. Annex 4. Thus, the Panel finds that Complainant has established its common law rights in the OPTIMISM mark under Policy ¶ 4(a)(i) and that it acquired that trademark at least by 2020.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OPTIMISM mark. Complainant contends that Respondent’s <optimism-coin.com> domain name is confusingly similar to Complainant’s OPTIMISM mark as it merely adds the generic term “-coin” and the generic top-level domains (“gTLD”) “.com” to the mark to form the disputed domain name. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).Therefore, the Panel finds that the disputed domain name is confusingly similar to the OPTIMISM mark 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)).
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 only the term “-coin” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <optimism-coin.com> domain name on December 17, 2022;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent does not have rights or legitimate interests in the <optimism-coin.com> domain name as Respondent is not licensed or authorized to use Complainant’s OPTIMISM mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Sicens Browns”. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <optimism-coin.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant. Any attempt to use a disputed domain name to pass a respondent off as a complainant 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 iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to believe wrongly that it is setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). In support, Complainant offers screenshot comparisons of Complainant’s website and the disputed domain name’s resolving websites, as well as evidence of an attempt to have visitors connect their cryptocurrency wallet to Respondent’s interface. See Compl. Annex 5-7. As such, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 submits that Respondent registered and uses the <optimism-coin.com> domain name in bad faith as Respondent uses the disputed domain name to pass itself off as Complainant. Any attempt to use a disputed domain name to pass off as a complainant for financial gain is evidence of bad faith registration and use under Policy ¶ 4(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.”). Here, Complainant offers screenshot comparisons of Complainant’s website and the disputed domain name’s resolving websites, as well as evidence of an attempt to have visitors connect their cryptocurrency wallet to Respondent’s interface. See Compl. Annex 5-7. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent’s use of a privacy shield in registering the <optimism-coin.com> domain name shows bad faith registration. The use of a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of a disputed domain name under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 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, Complainant has provided a printout of the WHOIS information for the disputed domain name showing the registrant as “Privacy service provided by Withheld for Privacy ehf”. See Compl. Annex 3. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <optimism-coin.com> domain name with actual knowledge of Complainant’s rights in the OPTIMISM mark. The Panel will decide whether Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). As evidence, Complainant contends that the disputed domain name’s resolving website is “a nearly exact copy” of Complainant’s site. See Compl. Annex 5-6. As such, the Panel finds that Respondent had actual knowledge of Complainant’s rights in its OPTIMISM mark when it registered the domain name, which supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel makes.
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 <optimism-coin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 16, 2023
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