Chia Network Inc. v. LINE Corporation
Claim Number: FA2307002052483
Complainant is Chia Network Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is LINE Corporation (“Respondent”), represented by Kenny Cheung of Baker & McKenzie, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finschia.network>, registered with MarkMonitor Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on July 10, 2023; Forum received payment on July 10, 2023.
On July 12, 2023, MarkMonitor Inc. confirmed by e-mail to Forum that the <finschia.network> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 July 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@finschia.network. Also on July 13, 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.
A timely Response was received and determined to be complete on August 28, 2023.
On August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David P. Miranda, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends it is the owner of U.S. Trademark Registration No. 6428600 for the CHIA Mark, which has been wrongfully registered and used by the Respondent. The U.S. trademark registration held by Complainant satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP. The Respondent’s inclusion of the CHIA Mark within the Respondent’s domain name, for a website that offers identical services to those provided by the Complainant, creates impermissible confusing similarities between the domain name and the Complainant’s registered mark. Complainant’s trademark registration with the USPTO sufficiently demonstrates Complainant’s rights in the CHIA Mark for the purpose of a Policy ¶ 4(a)(i) analysis even if Respondent lives or operates in a country where the mark is not registered, and establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). (see Annex 4 and 5).
Respondent registered the Domain Name on April 02, 2023. Complainant has used its CHIA Mark in connection with its goods and services since at least as early as November 5, 2017. Complainant owns trademark registrations in the United States, as well as in various international jurisdictions (see Annexes 4-5) the earliest of which was filed in February of 2018 and issued in June of 2018. Additionally, Complainant registered the domain <CHIA.NETWORK> on September 4, 1998 (see Annex 9), and launched a website showing the CHIA Mark at least as early as April 15, 2018 (see Annex 10). As such, Complainant is entitled to the presumption of ownership, validity and the exclusive right to use its mark in connection with the goods and services identified in its trademark registrations.
The Domain Name differs from the CHIA Mark only in that it adds the prefix “fins”, which is a common abbreviation for the word “financial.” (see Annex 6). The CHIA trademark is inherently strong and well known in the blockchain industry, which gives rise to a high level of protection. Where the addition of such a prefix that still gives clear reference to the goods and/or services related to those of the trademark owner, the result is an insufficient distinction between the Domain Name and the Complainant’s trademark. Given that both Complainant and Respondent operate in the financial blockchain space, the prefix “fins” is likely to be viewed by a consumer as referencing the provided goods/services.
Complainant contends Respondent has no legitimate right or interest in the Domain Name. Respondent is not connected or affiliated with Complainant and has not received a license or consent, express or implied, to use the CHIA Mark in the Domain Name in any other manner. Complainant does not sponsor or endorse the Respondent in any manner.
Complainant contends Respondent does not hold any legitimate interest in the Domain Name, which was registered with full notice of the Complainant’s registered CHIA trademark. Respondent’s use of the Domain Name to promote competing blockchain services under a name that references the entirety of the Complainant’s trademark does not constitute bona fide use as the Respondent is clearly attempting to attract consumers to their website by trading on the goodwill of the Complainant’s CHIA trademark.
Complainant contends Respondent is not making a fair or non-commercial use of the Domain Name, and is not using the Domain Name in connection with a bona fide offering of goods or services. Respondent’s <finschia.network> Domain Name resolves to a website that offers goods and services that directly compete with Complainant.
Complainant contends Respondent has acted in bad faith to divert the traffic from Complainant’s online location, and use the goodwill of the CHIA Mark to lure consumers for commercial gain and in direct competition with Complainant’s goods and services. Complainant contends Respondent engaged in bad faith, when registering and using the Domain Name in an attempt to attract commercial gain and by creating a likelihood of confusion between the Complainant’s CHIA Mark and the Respondent’s Domain Name.
Further, the Respondent’s registration of the Domain Name displays a finding of bad faith, where the federal registration of the CHIA Mark predates the Respondent’s adoption of the “Finschia” term.
Respondent registered and is using in bad faith the <finschia.network> Domain Name, which is confusingly similar to Complainant’s CHIA Mark. Respondent is not known and has never been known as CHIA or <CHIA.NETWORK>, and is not authorized to use the CHIA Mark in any way. The use of the <finschia.network> Domain Name by Respondent to divert traffic from Complainant’s online location to its website in order to deceive consumers is in bad faith. Complainant and the public will be irreparably harmed by the Respondent’s continued registration of the <finschia.network> Domain Name.
B. Respondent
Respondent LINE Corporation (“Respondent”) contends the Domain Name is different from the Complainant’s prior registered trademark in terms of overall appearance, textual component, pronunciation and meaning: FINSCHIA.NETWORK v. CHIA.
The literal meaning of the word “FINSCHIA” is a genus of three recognized species of large trees constituting part of the plant family Proteaceae. (see Annex 1). Respondent has adopted “FINSCHIA” as the brand and name for its blockchain business with the hope that its business will grow and prosper healthily in the ecosystem like trees. As a result of Respondent's promotion and use of the brand “FINSCHIA”, “FINSCHIA” has built sole relationship with LINE Corporation.
While the Domain Name wholly incorporates “CHIA”, it is not identical or confusingly similar to the Complainant’s CHIA Mark. As mentioned above, “FINSCHIA” is an existing English word with a known and separate meaning which cannot be simply split into or looked at separately as “FINS” and “CHIA”.
The Respondent, LINE Corporation is a global Internet company with revenues of US$1.5 billion and assets of US$5 billion and the provider of the LINE messaging service with hundreds of millions active monthly users around the world. It has been developing its blockchain ecosystem since 2018 through the introduction of crypto services named LINK Chain that provide crypto asset trading services, crypto coin named Finschia (FNSA), a wallet, and an NFT marketplace. LINK Chain was rebranded to LINE Blockchain in 2020. (See Line Corporation - Global News – Annex 3).
The Finschia Foundation was founded in Abu Dhabi, United Arab Emirates, at the end of March, 2023 (See the company of the Finschia Foundation – Annex 4), to lead the global blockchain market in partnership with all members of the ecosystems as well as LINE. In April 2023, LINE blockchain has taken off a new journey with its rebranded name: Finschia. In May 2023, the FINSCHIA was publicly disclosed when Finschia mainnet integration was completed.
The Domain Name resolves to Respondent’s only website. Respondent uses the “FINSCHIA” domain for the Finschia Foundation’s email address (@finschia.org) and customer accounts.
Respondent founded The Finschia Foundation in Abu Dhabi, United Arab Emirates, at the end of March, 2023, launched the “Finschia” brand in April 2023 (See the date of publication of Annex 2) and registered the Domain Name in February 2023 and, promptly thereafter, Respondent launched its public website to offer the above described services. Respondent is in all circumstances making fair use of the Domain Name.
Since launching the brand "Finschia", registering the domain in February 2023 and launching its website, Respondent has actively used the Domain Name in connection with its website to market and advertise its blockchain and Web3 services. Respondent did not acquire the domain with the intention of selling it for profit. Respondent is an established corporation established in 2000 and headquartered in Japan, and was never in the business of buying and selling domain names and has no history of cybersquatting or domain name trolling. Contrary, it is important to recognize that Respondent registered the domain name as part of the rebrand of its existing legitimate blockchain, Web3 and crypto business which started back in 2018.
The mere fact that the Domain Name incorporates the same four letters is insufficient to establish bad faith on the part of Respondent. As described above, Respondent has a bona fide, viable and thriving business which is built on a well-developed website resolving from the Domain Name, and Respondent conducts business and that business is commonly known by the Finschia mark.
Respondent is not attempting to attract commercial gain by creating a likelihood of confusion between the Complainant's CHIA Mark and the Respondent's Domain Name and nor is there any risk of confusion between the CHIA mark and the Respondent’s Domain Name.
Respondent has registered and is using the <finschia.network> Domain Name which is not confusingly similar to Complainant's CHIA Mark. The Respondent has been commonly known by the Domain Name, even if Respondent has not acquired trademark or service mark rights. A transfer of the Domain Name to Complainant would result in an extraordinary and unfair interruption of Respondent’s business and it would lead to confusion in the blockchain industry where the domain name has been firmly associated with the Respondent and impact on the holders of the Respondent's crypto coin named FINSCHIA (FNSA) that is listed on various centralized crypto exchanges like Bitthumb, Huobi, Bittrex and Gate.io.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Complainant Chia Network Inc. is the owner of the CHIA Mark, including other variants (“CHIA Mark”). The CHIA Mark is registered with the U.S. Trademark Office. Complainant’s registration of a mark with the U.S. Patent and Trademark Office establishes its rights in the mark sufficient to satisfy Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Forum Feb. 9, 2007) (“Complainant’s trademark registration with the USPTO adequately demonstrates its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Complainant is the owner of U.S. Trademark Registration No. 6428600 for the CHIA mark in International Classes 9, 36, and 42.
Complainant’s trademark registration with the USPTO sufficiently demonstrates Complainant’s rights in the CHIA Mark for the purpose of a Policy ¶ 4(a)(i) analysis even if Respondent lives or operates in a country where the mark is not registered. See SDC Media, Inc. v. SCMedia, FA 960250 (Forum Jun. 7, 2007) (holding that “trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The Domain Name differs from the CHIA Mark only in that it adds the prefix “fins”, which can be a common abbreviation for the word “financial.” The CHIA trademark is inherently strong and well known in the blockchain industry, which gives rise to a high level of protection. Where the addition of such a prefix that still gives clear reference to the goods and/or services related to those of the trademark owner, the result is an insufficient distinction between the Domain Name and the Complainant’s trademark. See Coachella Music Festival, LLC v. Ruchard Kutbach, FA 1866739 (Forum Nov. 17, 2019) finding that <kidchellamusicfestival.com> should be transferred to Coachella Music Festival, where “kidchella” still gives the audience a reference to the COACHELLA trademark, especially as the word “kidchella” adds the prefix “kid” to the Complainant’s mark “CHELLA”). Given that both Complainant and Respondent operate in the financial blockchain space, the prefix “fins” is likely to be viewed by a consumer as referencing the provided goods/services.
An addition of the term to a registered mark fails to prevent confusing similarity according to Policy ¶ 4(a)(i). See PC2Call Limited v. Bernard Ferrie, FA 103181 (Forum Feb. 2002) (finding the addition of the term 'my' as prefix to a mark does not diffuse the confusingly similar nature between the disputed domain name and Complainant's mark. Therefore, <mypc2call.com> is confusingly similar to Complainant's mark PC2CALL); see also Facebook Inc. v. Qian Mengdan, D2019-0251 (WIPO Mar. 15, 2019) (finding that the addition of the word “portal” does not avoid confusing similarity between the respondent’s domain <portalfacebook.com> and the registered mark FACEBOOK, and ordering the transfer of the domain name to Facebook). Consequently, the Domain Name is confusingly similar to Complainant’s mark.
The Complainant operated under the gTLD “.net”, and Complainant’s trade name is “Chia Network.” Respondent’s use of the <finschia.network> domain name only further heightens the likelihood of confusion. Confusing similarity is inferred where a Respondent registers a domain name incorporating Complainant’s mark, even where the Complainant already owns a domain name reflecting their mark in a different gTLD. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., D2000-0113 (WIPO Apr. 13, 2000).
Under Policy ¶4(a)(ii), since Complainant has properly alleged the Respondent is not licensed or otherwise authorized to use the Domain Name and is not using the domain for legitimate business purposes, it meets its initial burden of prima facie proof for the Complainant that Respondent has no legitimate rights or interests in the Domain Name. See Career Builder, LLC v. Baker, D2005-0251 (WIPO May 6, 2005).
Respondent’s use of the Domain Name to promote competing blockchain services under a name that references the entirety of the Complainant’s trademark does not constitute bona fide use by attempting to attract consumers to their website by trading on the goodwill of the Complainant’s CHIA trademark. Complainant’s federal registration for the CHIA Mark pre-existed for many years prior to Respondent’s use of the domain at issue. One who has constructive knowledge of the trademark, acquires a confusingly similar domain name which intends to use in competition with the trademark owner, has no rights or legitimate interests in the domain name. See Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc, D2000-0090 (WIPO Apr. 11, 2000).
Respondent’s <finschia.network> Doman Name resolves to a website that offers goods and services that directly compete with Complainant. Use of a domain name incorporating a complainant’s mark to sell products and/or services that compete with a complainant’s business does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Use of a domain name that is identical or confusingly similar to a trademark or service mark that applies to goods sold by a Respondent is not a bona fide use if the domain name serves to attract customers to the Respondent’s site, rather than merely as a descriptor of the Respondent’s products. See AltaVista Company v. Saeid Yomtobian, D2000-0937 (WIPO Oct. 13, 2000) (where the Panel found no bona fide offering of services in circumstances in which the Respondent is using the domain to divert users to its own services). The “mere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not establish rights or legitimate interests in the domain names on the part of Respondent.” See Adobe Systems Incorporated v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000).
Given that the Respondent has never been authorized or licensed to use the CHIA Mark, nor has ever received any approval, expressed or implied, to associate itself with the CHIA Mark; and is using Complainant’s trademark as a domain name to “bring people to a website that offers goods and services not authorized by and competitive to” those of the Complainant, the Panel finds Respondent’s use of the domain name is not a legitimate use. See Pitney Bowes Inc. v. Mike Ostanik, D2000-1611 (WIPO Jan. 24, 2001); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant has used its CHIA Mark in connection with its goods and services since at least as early as November 5, 2017. Complainant owns trademark registrations in the United States, as well as in various international jurisdictions the earliest of which was filed in February of 2018 and issued in June of 2018. Additionally, Complainant registered the domain <CHIA.NETWORK> on September 4, 1998, and launched a website showing the CHIA Mark at least as early as April 15, 2018.
Complainant acquired registered and unregistered common law rights in the CHIA Mark prior to Respondent registering the Domain Name on April 02, 2023. “Unregistered or common law trademark rights will suffice to support a domain name complaint under the policy.” See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO Aug. 18, 2005). Common law rights can “exist simultaneously with and independently of trademark rights attained through registration and provide a separate basis” for complainant’s rights to a mark. See Office of Personnel Management v. MS Technology Inc., FA 198898 (Forum Dec. 9, 2003).
Further, the Respondent’s registration of the Domain Name displays a finding of bad faith, where the federal registration of the CHIA Mark predates the Respondent’s adoption of the “Finschia” term. As a matter of the United States trademark law, (15 U.S. C. § 1072), it may be presumed that Respondent was on constructive notice of Complainant's rights in the CHIA Mark prior to registering the Domain Name <finschia.network>. See Barneys Inc. v. BNY Bulliten Board, D2000-0059 (WIPO Apr. 2, 2000). In addition, Respondent is operating in the same field as Complainant and has failed to create any substantial issue of fact regarding its knowledge of the pre-existing registration. Bad faith registration exists where the Respondent knew of Complainant’s mark because the Respondent was a competitor of the Complainant. See Moana Pacific Fisheries Limited v. Turner New Zealand, D2000-0139 (WIPO Apr. 26, 2000).
Respondent registered and is using in bad faith the <finschia.network> Domain Name, which is confusingly similar to Complainant’s CHIA Mark. Respondent is not known and has never been known as CHIA or <CHIA.NETWORK>, and is not authorized to use the CHIA Mark in any way. The use of the <finschia.network> Domain Name by Respondent to attract traffic from Complainant’s online location to its website is in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <finschia.network> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
David P. Miranda, Esq., Panelist
Dated: September 12, 2023
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