Ethereum Name Service v. Host Master / 1337 Services LLC
Claim Number: FA2304002039164
Complainant is Ethereum Name Service Labs Limited (“Complainant”), represented by Andrew J. Avsec of Crowell & Moring LLP, Illinois, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enscom.domains>, <manage-ens.domains>, <config-ens.domains>, <ipfs-ens.domains>, <ens-domains-drop.com>, <claims-ens.com>, <tokens-ens.com>, <ensesp.net>, <cens.domains>, <ens-token.claims>, <ens.solar>, <my-ens.domains>, <governance-ens.exchange>, <ensaidrops.com>, <ensgiveway.com>, <sens.domains>, <ens-event.com>, <domains-ens.com>, <event-ens.com>, <free-ens.com>, <mint-ens.com>, <mainnet-ens.domains>, and <clalm-ens.domains>, registered with Tucows Domains 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on April 6, 2023; Forum received payment on April 6, 2023.
On April 11, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <enscom.domains>, <manage-ens.domains>, <config-ens.domains>, <ipfs-ens.domains>, <ens-domains-drop.com>, <claims-ens.com>, <tokens-ens.com>, <ensesp.net>, <cens.domains>, <ens-token.claims>, <ens.solar>, <my-ens.domains>, <governance-ens.exchange>, <ensaidrops.com>, <ensgiveway.com>, <sens.domains>, <ens-event.com>, <domains-ens.com>, <event-ens.com>, <free-ens.com>, <mint-ens.com>, <mainnet-ens.domains>, and <clalm-ens.domains> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@enscom.domains, postmaster@manage-ens.domains, postmaster@config-ens.domains, postmaster@ipfs-ens.domains, postmaster@ens-domains-drop.com, postmaster@claims-ens.com, postmaster@tokens-ens.com, postmaster@ensesp.net, postmaster@cens.domains, postmaster@ens-token.claims, postmaster@ens.solar, postmaster@my-ens.domains, postmaster@governance-ens.exchange, postmaster@ensaidrops.com, postmaster@ensgiveway.com, postmaster@sens.domains, postmaster@ens-event.com, postmaster@domains-ens.com, postmaster@event-ens.com, postmaster@free-ens.com, postmaster@mint-ens.com, postmaster@mainnet-ens.domains, postmaster@clalm-ens.domains. Also on April 17, 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 May 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant launched its business in 2017. Like the domain name system, Complainant’s service is used to map human-readable names to machine readable hexadecimal identifiers such as Ethereum and other cryptocurrency addresses, content hashes, and metadata, all of which are used in the provision of financial services such as the trading of digital assets. Complainant has common law and registered rights in the trademark ENS through its use in commerce and registration with the Intellectual Property Office of Singapore (e.g. Reg. No. 40201821218Y, which was filed on October 10, 2018 and completed registration on June 16, 2019). Respondent’s domain names are confusingly similar to the ENS mark, as they include the mark in its entirety and only add generic or descriptive terms, many of which describe Complainant’s services, as well as a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain names since it is not licensed or authorized to use Complainant’s ENS mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use of the domains. Instead, Respondent is passing itself off as Complainant for fraudulent activity, including malware and phishing through illicit websites and social media posts. Some of the disputed domain names resolve to parked pages or are inactive.
Respondent registered and uses the disputed domain names in bad faith by using confusingly similar terms to attract consumers and by impersonating Complainant. Respondent is also conducting a phishing scheme which it has promoted through social media posts. In addition, some of the disputed domain names are inactive or contain hyperlinks to unrelated third parties. Finally, Respondent registered the disputed domain names with false WHOIS information and actual knowledge of Complainant’s rights in the ENS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has proven its ownership of rights in the ENS trademark and each of the disputed domain names is confusingly similar to the mark as they add generic or descriptive terms plus a gTLD;
- Respondent has no rights or legitimate interests in the disputed domain names as it is not commonly known thereby and its use, to resolve to potential malware sites, pay-per-click sites, or no content at all, is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use; and
- Respondent’s above-mentioned use of the disputed domain names indicates that it is seeking to attract users based on confusion with Complainant’s mark and for commercial gain. It is also disrupting Complainant’s business and has engaged in a pattern of registering multiple domain names that incorporate the mark. As such, it has registered and uses the disputed domain names in bad faith.
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”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that, despite the listing of a privacy service in the respective public WHOIS records, the disputed domain names at issue are effectively owned or controlled by the same domain name holder. It requests that these multiple domain names be consolidated into the present proceeding. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Despite being presented with WHOIS records that name different Registrants, prior Panels have held that consolidation of a case against multiple domain names is appropriate where there are other similarities that indicate a likelihood of common ownership. See, e.g., American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. / Reema Gupta, Ballu Balwant, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lucy Lionel, Lucy99, Red Keep, D2021-0294 (WIPO Mar. 11, 2021) (consolidation upheld based on “the similar content and layout of the websites that were linked to the disputed domain names; the fact that all the disputed domain names target a specific sector and the same trademark within this sector; the similar patterns in the disputed domain names; and the identical reaction of the Respondents to the Complaint, not replying to the Complainant’s contentions.”); Brooks Sports, Inc. v. Shuai Li / Nan Zhang, FA 1932371 (Forum Mar. 18, 2021) (similar website content, use of same registrars and privacy services).
Complainant contends that, despite their respective WHOIS records being redacted for privacy[i], the disputed domain names are controlled by the same entity for a number of reasons including the facts that i) as disclosed in the Registrar verification provided to the Forum, the disputed domain names all share the same registrant information, including the same names, phone numbers, email addresses, and postal address in Saint Kitts and Nevis, ii) the domain names were registered with the same registrar and within a span of just over three months; and iii) they all share a common IP address located in Russia. Additional factors are cited in the Complaint but the Panel feels that the aforementioned are sufficient grounds upon which to make a finding on the issue of consolidation.
In light of the above similarities and intersections – particularly the identification of the same Registrant in the Registrar verification email – and in the absence of participation in these proceedings by any party claiming to be a Registrant of these domain names, the Panel determines it is more likely than not that all of the disputed domain names are under common control by the same domain name holder. As such, there is no inequity in consolidating these domain names into the present case, which will proceed against all of them, and their holder will be referred to in the singular as “Respondent”.
Complainant claims rights in the ENS mark through common law and through its trademark registration with the Intellectual Property Office of Singapore. Registration of a mark with a governmental authority is a valid establishment of rights in a mark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”) Since Complainant provides evidence of registration of the ENS mark in the form of screenshots from the Intellectual Propoerty Office of Singapore, the Panel declines to analyze its claim under common law and finds that Complainant has rights in the ENS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the disputed domain names are confusingly similar to its ENS mark since each one uses the entire ENS mark, merely adding a generic or descriptive term (e.g., “mint”; “governance”; “token”; “domains”; “config”) and a gTLD (e.g., “.domains”; “.com”; “.exchange”). When a disputed domain name wholly incorporates a complainant’s mark, Panels have found that adding generic or descriptive terms does not 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.”) Further, Complainant asserts that “The addition of descriptive terms that might be commonly used in connection with the Complainant’s mark exacerbates the confusing similarity”. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”) Similarly, gTLDs are typically irrelevant for purposes of Policy ¶ 4(a)(i) analysis unless they too add meaning that is relevant to an asserted mark or its related products or services. See BOURSORAMA SA v. AMZATH LOUKMANE, 104185 (CAC Jan. 3, 2022) (“the ‘.online’ TLD increase [sic] the risk of confusion with the Complainant’s products and services as it may refer to checking the Complainant’s online financial information portal.”); 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 only adds various generic or descriptive terms and a gTLD, many of which relate to Complainant’s online addressing services, to the ENS mark, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant asserts that “Respondent cannot prove any of the four circumstances outlined under Paragraph 4(c) of the Policy”.[ii] First, it mentions that Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the ENS mark. It is well accepted that WHOIS information may be considered when determining 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). In addition, where there is no evidence to indicate that a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interests 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 1620789 (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 Registrar verifications for the disputed domain names list the Registrant as “Host Master” with the Organization name “1337 Services LLC.” Further, a signed declaration submitted by Complainant’s Executive Director notes that it is “not aware of any other companies doing business under the ENS name” in relation to its online addressing services. There is also no other evidence to suggest that Respondent is authorized, licensed, or otherwise permitted to use the ENS mark or that it is affiliated in any way with Complainant. Based on presented evidence, the Panel has no ground upon which to find that Respondent is commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent uses some of the disputed domain names for fraudulent purposes including phishing and malware, as well as for websites that impersonate Complainant and seek to disrupt its business. Panels have consistently held that using a disputed domain name to defraud consumers — whether through malicious software, phishing, or otherwise — does not confer rights or legitimate interests per Policy ¶ 4(a)(ii). See, e.g., Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA 1600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”) Complainant asserts that some of the disputed domain names presently resolve, or in the past resolved to sites featuring the ENS mark and purporting to offer online addressing or financial services. It also claims that “[s]ome of the disputed domain names copy the Complainant’s name, logo, and website” and that others are used for “attacking Complainant’s ENS staff…” Complainant’s evidence on these points is lacking as many of the submitted screenshots show classic pay-per-click sites or a non-resolving page. None of the submitted screenshots show Complainant’s ENS logo or appear to have copied content from Complainant’s own <ens.domains> website. The only exceptions are a screenshot of the disputed <ens.solar> domain name which mentions that a number of “@ens” tags were “Recently Claimed” and the screenshot of the <enscom.domains> website which displays the messages “Trusted ENS name service” and “ensCOM is a name service project designed to help others find you” in association with a form inviting users to input their .com domain name and convert it to an “eth address”. However, a number of submitted screenshots for the disputed domain names display the message “Deceptive Website Warning” which may indicate the presence of malware.
Complainant further submits an image of a Twitter post from an account named @ens_domainseth which mentions the ENS mark and contains a link to a site that is not at issue in this case, but which does mention the disputed <clalm-ens.domains> domain name. Another submitted Twitter post from an account name that does not mention Complainant’s mark displays the ENS mark and logo to promote the disputed <mainnet-ens.domain> domain name. Finally, Complainant has submitted copies of email exchanges it had with Twitter regarding takedowns of account names @ensdomains_1, @ensdommains and @ensdomaiins but it is unclear to the Panel what relevance these takedowns have to either of the above-mentioned Twitter accounts or to any of the disputed domain names.
While Complainant’s evidence doesn’t entirely match up with all of its assertions, based on a preponderance thereof, the Panel does find that Complainant has made a prima facie case, which has not been rebutted, that Respondent uses the disputed domain names to attract consumers and pass itself off as Complainant in a manner that is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that several of the disputed domain names merely resolve to parked pages. A respondent’s resolution of a confusingly similar domain name to a parked page with commercial hyperlinks has been found not to satisfy Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA 1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”) For some of the disputed domain names Complainant provides screenshots of what appear to be classic pay-per-click pages (e.g., the <ens-token.claims> website displays links titled “Tokens”, “Access”, and “Password Authentication”). As these websites use the ENS mark to promote third-party commercial activities, the Panel similarly finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant notes that several of the disputed domain names are now inactive and do not resolve to any website content. Failing to actively use a disputed domain name is not a bona fide or legitimate use thereof. 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 screenshots of several disputed domain names that fail to resolve to active websites, instead resulting in error messages such as, “This site can’t be reached.” As the Complainant’s mark is copied in conjunction with generic or descriptive words that are relevant to Complainant’s business, and as Respondent has not provided any explanation of a planned use for these domains, the Panel finds that Respondent lacks rights or legitimate interests in the non-resolving disputed domain names per Policy ¶¶ 4(c)(i) or (c)(iii).
Complainant claims that Respondent had actual knowledge of the ENS mark when it registered the disputed domain names. A respondent’s actual knowledge of an asserted mark can form a solid foundation upon which to build a case for bad faith. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”) To support this assertion, Complainant notes Respondent’s pairing of the ENS mark in the domain names with generic or descriptive words that are related to Complainant’s field of business as well as links to some of the disputed domain names in suspicious Twitter posts. The signed declaration of Complainant’s Executive Director also claims that “ENS has also received wide recognition internationally through various publications. These includes [sic] but are not limited to, Fortune Crypto, Yahoo, and CNN Business” and copies of articles from these media outlets are appended as exhibits. Based on Complainant’s evidence, the registration of multiple domain names incorporating the ENS mark, and Respondent’s above-mentioned use of the disputed domain names, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s mark.
Next, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by incorporating the ENS mark into the domain names to disrupt its business and confuse and attract consumers by passing itself of as Complainant. It claims that Respondent uses some of the disputed domain names to phish for confidential information from customers or to deposit malware. Panels have found that passing off, phishing, and promoting malware are all indicative of bad faith registration and use per Policy ¶¶ 4(a)(iii) and (iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”) Also see Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); Agilent Technologies, Inc. v. du qiang qiang, FA 2039579 (Forum May 11, 2023) (“Respondent’s registration and use of the at-issue domain name to further malware suggests Respondent’s bad faith under the Policy.”) As mentioned above, several of the disputed domain names are blocked or result in danger warnings. Another references @ENS tags and yet another invites users to enter their .com domain names and convert them into an eth address. There are also Twitter posts promoting two of the fraudulent domain names. While Complainant’s evidence could be more robust, the Panel finds that it does tip the balance of probabilities in favor of a finding that Respondent is seeking to attract users to its websites through confusion with the ENS mark for commercial gain and either phishing, the deposition of malware, or the promotion of other nefarious activities. Respondent has not appeared in these proceedings and so it does not offer an alternative explanation for its actions. As such, the Panel finds, by a preponderance of the evidence, that Respondent has registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(a)(iii) and (iv).
In addition, Complainant contends that Respondent uses some of the disputed domain names to host hyperlinks to unrelated third party sites. Panels have considered a respondent’s use of a disputed domain name as a parked page with hyperlinks to show bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted, some of the disputed domain names resolve to pages with classic pay-per-click links displaying topics that relate to Complainant’s line of business. As such, this further supports a finding of bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that not actively using some of the domain names demonstrates bad faith. Panels have found that a respondent’s failure to make active use of a domain name can show bad faith under Policy ¶ 4(a)(iii) after taking into account all of the circumstances of a given case. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA 1522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). As indicated previously, several of Respondent’s domain names do not resolve to any active site. Based on this, as well as the nature and number of disputed domain names, the Panel considers Respondent’s failure to actively use certain of the disputed domain names as further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Next, Complainant suggests that Respondent’s registration of the disputed domain names with false information shows bad faith. Panels have agreed that registering a disputed domain name with false or misleading WHOIS information may indicate bad faith per Policy ¶4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”) Complainant points specifically to the last four digits of the phone number revealed by the Registrar verification, “1337” and notes that this is a “hacker term” meaning “leet” or “elite”. This number also appears in the name of Respondent’s Organization “1337 Services LLC”. While the Panel feels the uses of this number are somewhat suspect, it is not inclined, without further evidence, to find that it indicates hacking or other malicious intent by Respondent. In any event, as bad faith has already been found, this particular assertion is rather moot.
Finally, although not mentioned by Complainant, the Panel notes that the number of disputed domain names here at issue may exhibit a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), registration of multiple disputed domain names in a single proceeding may demonstrate a pattern of bad faith registration and use. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA 1558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding … was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)). The Panel notes that there are twenty-three confusingly similar domain names at issue in this case. Based on this significant number, the Panel is of the opinion that Respondent has registered the disputed domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name and that it has engaged in a pattern of such conduct under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enscom.domains>, <manage-ens.domains>, <config-ens.domains>, <ipfs-ens.domains>, <ens-domains-drop.com>, <claims-ens.com>, <tokens-ens.com>, <ensesp.net>, <cens.domains>, <ens-token.claims>, <ens.solar>, <my-ens.domains>, <governance-ens.exchange>, <ensaidrops.com>, <ensgiveway.com>, <sens.domains>, <ens-event.com>, <domains-ens.com>, <event-ens.com>, <free-ens.com>, <mint-ens.com>, <mainnet-ens.domains>, and <clalm-ens.domains> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 19, 2023
[i] The Panel notes that, while Complainant does not submit screenshots of the public WHOIS records for the disputed domain names, it does provide a table listing such information. Although primary evidence is preferred, the point is moot as the Registrar verification to the Forum, which removes this privacy shield, does, in fact, support the claim that all of the disputed domain names are commonly owned. Furthermore, Respondent has not contested Complainant’s evidence.
[ii] The Panel is confused by this reference to “four circumstances” as Policy ¶ 4(c) only contains three examples. It may be that the Complainant refers to another policy, such as the .usTLD Dispute Resolution Policy, which does, in fact, offer four circumstances by which a respondent may demonstrate rights or legitimate interests.
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