SmartContract Chainlink, Ltd. v. L P
Claim Number: FA2302002033646
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona. Respondent is L P (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chainrs.link>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 27, 2023; Forum received payment on February 27, 2023.
On February 28, 2023, Hostinger, UAB confirmed by e-mail to Forum that the <chainrs.link> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@chainrs.link. Also on February 28, 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 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, SmartContract Chainlink, Ltd. is in the computer software business.
Complainant asserts rights in the CHAINLINK mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s
<chainrs.link> is confusingly similar to Complainant’s CHAINLINK
trademark because it incorporates the mark
in its entirety, uses the second half of the mark as a generic top-level domain
name (“gTLD”) “.link” and adds the letters “rs.”
Respondent does not have rights or legitimate interests
in the <chainrs.link> domain name. Respondent is not licensed or
authorized to use Complainant’s CHAINLINK
mark and is not commonly known by the at-issue
domain name. Respondent also does not use the at-issue domain name for any bona
fide offering of goods or services or legitimate noncommercial or fair use.
Rather, Respondent attempted passing off as Complainant in furtherance
of a phishing scheme. Respondent now inactively holds the domain name.
Respondent registered and uses the <chainrs.link>
domain name in bad faith. Respondent
creates a likelihood of confusion with Complainant for commercial gain. Respondent had actual knowledge
of Complainant’s rights in the CHAINLINK mark. Respondent inactively holds the at-issue
domain name. Respondent engages in a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CHAINLINK mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CHAINLINK trademark.
Respondent used the at-issue domain name pass itself off as Complainant and defraud third-parties and now holds the domain name passively.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows that it registered CHAINLINK and various related marks with the USPTO. Complainant’s registration for CHAINLINK with at least one recognized trademark registrar is conclusive evidence of its rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <chainrs.link> domain name consists of a recognizable variant of Complainant’s CHAINLINK trademark where the letters “rs” follow “CHAIN” and where the domain name concludes with “link” prefixed by the syntactically required period that begins the “.link” top level domain name. Here, the domain name’s descriptive top-level contains a material portion of Complainant’s trademark. Perhaps to highlight what is obvious, while a generic domain name’s top-level, e.g. .com, .net, .org, etc. has been generally found irrelevant in distinguishing a domain name from a trademark under Policy ¶ 4(a)(i), in the instant case the at-issue top-level is significant to the Panel’s analysis as its theme descriptive component (“link”) contains a material portion of Complainant’s CHAINLINK trademark and thus adds to the similarity between the Complainant’s mark and Respondent’s domain name. Cf. Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <chainrs.link> domain name is confusingly similar to Complainant’s CHAINLINK trademark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also, 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.”)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <chainrs.link> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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)”).
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “L P.” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <chainrs.link> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent has used the at-issue domain name to address a website mimicking Complainant’s genuine website so as to appear as if it were sponsored by Complainant. The website displayed Complainant’s trademark and included a link to “Connect Wallet” which enabled Respondent to attempt to obtain personal information or cryptocurrency data from website visitors that believed they were dealing with Complainant. Such use of <chainrs.link> is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
Additionally, Respondent currently holds the at-issue domain name passively. Browsing to the domain name returns an error message stating: “This site can’t be reached.” Respondent’s failure to actively use the <chainrs.link> domain name is also not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”)
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent has used the at-issue domain name to address a website mimicking Complainant’s genuine website so as to pose as Complainant and facilitate fraud by misappropriating the private data of third-parties. Respondent’s prior use of the domain name in this manner was disruptive to Complainant’s business; capitalized on the confusion Respondent created between the at-issue domain name and Complainant’s mark; sought to misappropriate personal information; and attempted to misdirect third-parties to Respondent’s imposter website. Respondent’s prior use of <chainrs.link> thereby demonstrates Respondent’s bad faith per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Funding Circle Limited v. tim mcelwain / timmcelweain FA 2003934 (Forum Aug. 4, 2022) (Respondent uses the at-issue domain name to facilitate [a] phishing scheme designed to swindle funds from Complainant’s customers. Such use of the confusingly similar domain name indicates Respondent’s bad faith under the Policy.); see also, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”); see also, Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”).
Next, Respondent currently holds its confusingly similar <chainrs.link> domain name passively. Respondent’s failure to actively used the at-issue domain name is evidence of bad faith under Policy ¶ 4 (a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CHAINLINK mark when Respondent registered <chainrs.link> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s CHAINLINK trademark and related marks and from Respondent’s use of the domain name to pose as Complainant by addressing a website that mimicked Complainant’s genuine website. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in CHAINLINK further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chainrs.link> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 24, 2023
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