DECISION

 

OKC Holdings Corporation v. frank godin

Claim Number: FA2310002064442

PARTIES

Complainant is OKC Holdings Corporation ("Complainant"), represented by Sharoni S. Finkelstein of Venable LLP, California, USA. Respondent is frank godin ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theokxcryptofield.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 2, 2023; Forum received payment on October 2, 2023.

 

On October 10, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <theokxcryptofield.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 October 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@theokxcryptofield.com. Also on October 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 November 2, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

 

1.       Complainant is a Seychelles company engaged in the provision of a platform and/or mobile application under the OKX brand and trademark which enables users to deal in digital asserts and which is one of the largest and most well-known cryptocurrency exchanges in the world, with millions of users in over 100 countries.

2.       Thus, the Complainant has, for example, registered trademark rights in the European Union trademark for OKX, Registered number 018657470, registered on July 19, 2022.

3.       Complainant has rights in the aforesaid OKX trademark and similar marks registered with numerous authorities internationally. 

4.       Complainant also has common law trademark rights to the OKX trademark and has held those rights since at least January 2022 when it first used the mark and early in the same year when it obtained its first registration of the mark (collectively, with respect to the Complainant's registered and common law trademarks, "the OKX trademark").   

5.       Complainant is also the owner of the domain name <okx.com> which it uses in its business as an official domain name and for its own website.

6.       Respondent registered the <theokxcryptofield.com> domain name ("the disputed domain name") on June 2, 2023.

7.       In so doing, Respondent has incorporated in the disputed domain name the Complainant's OKX trademark without any authority to do so and has added the generic words "the",  "crypto" and "field" to make up the domain name.

8.       The Complainant acquired registered and common law trademark rights to the OKX mark prior to the registration by the Respondent of the disputed domain name.

9.       Respondent has caused the disputed domain name to resolve to an imposter website purporting to be that of the Complainant, duplicating in many respects the contents of Complainant's official website at www.okx.com, including elements of its website copied by the Respondent in which the Complainant has copyright.

10.       Respondent has also held itself out as being the Complainant and as being entitled to use the OKX mark.

11.       The Respondent has by that means infringed the Complainant's OKX trademark.

12.       The disputed domain name is confusingly similar to the Complainant's OKX trademark. In particular, the Respondent has added to the OKX  trademark the words "the",  "crypto" and "field" which are generic words which exacerbate the confusing similarity between the disputed domain name and the OKX trademark.

13.       Respondent has no rights or legitimate interests in the domain name. That is so because:

 

(a)                      it is not commonly known by the domain name;

(b)                      it registered the domain name on June 2, 2023, but the Complainant had been using its OKX trademark in its business since January 2022;

(c)                      it is passing itself off as the Complainant;

(d)                       the website to which the disputed domain name resolves features images taken from the Complainant's own OKX website and trades on the goodwill of the Complainant acquired in the OKX mark and brand;

(e)                       its website is a forgery used to induce internet users to part with their personal information and invest money with the Respondent;

(f)                      the United Kingdom Financial Conduct Authority has sanctioned the Respondent and warned the community against dealing with it.

 

14.       Respondent has registered and is using the domain name in bad faith. That is so because it:

 

(a)       registered and used the disputed domain name to capitalize on the goodwill associated with the Complainant's OKX mark and has sought to trade off that goodwill;

(b)        copied and misappropriated images on the Complainant's own website and has sought to attract customers to its illegitimate website;

(c)       had actual knowledge of the Complainant and its mark when it registered the disputed domain name;

(d)        passed itself off as the Complainant for a phishing scheme under which it can obtain internet users' personal and financial information;

(e)       impersonated the Complainant, perpetrated a fraud, disrupted the Complainant's business and created a likelihood of confusion with the Complainant's trademark as to the contents of the website to which the dispute domain name resolves;

(f)       used a privacy service in registering the disputed domain name so as to conceal its identity.

 

15.       The Complainant has cited numerous prior UDRP decisions to support its contentions.

 

16.       It is submitted that the Complainant has shown all of the elements it must establish and that the domain name should therefore be transferred from the Respondent to the Complainant

 

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a Seychelles company engaged in the provision of a platform and/or mobile application under the OKX trademark which enables users to deal in digital asserts and which is one of the largest and most well-known cryptocurrency exchanges in the world, with millions of users in over 100 countries.

2.       Complainant has established its registered trademark rights in the European Union trademark for OKX, Registered number 018657470, registered on July 19, 2022 and similar marks for OKX registered with numerous authorities internationally (collectively "the OKX trademark").

3.       Complainant also has established its common law trademark rights in the OKX trademark and that it has held those rights since at least January 2022.

4.       Respondent registered the <theokxcryptofield.com> domain name ("the disputed domain name") on June 2, 2023.

5.       Complainant acquired its rights in the OKX trademark well prior to the registration of the disputed domain name.

6.       Respondent has caused the disputed domain name to resolve to an imposter website purporting to be that of the Complainant, copying in many respects the contents of Complainant's official website at www.okx.com which it uses in its business as its official website.

7.       By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's OKX trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used in bad faith.

8.       Accordingly, the disputed domain name should be transferred to the Complainant.

 

DISCUSSION

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 the 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, 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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a

trademark or service mark on which it may rely. The evidence shows that the Complainant has established its rights in the OKX trademark registered in the name of the Complainant with numerous trademark registration authorities around the world. That is demonstrated by the many registrations detailed in the Complaint and by the Declaration made by a director of the Complainant and filed in this proceeding.

 

The Complainant has adduced evidence of the foregoing registrations, which the Panel has examined and which it accepts. Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark, which is the element that it must prove and which it has established. Since Complainant has registered and has established its rights in the OKX trademark through its widespread registration of the mark, the Panel finds that the Complainant has rights in the OKX mark under Policy ¶ 4(a)(i).

 

The Panel also finds that the evidence shows that the Complainant has common law or unregistered trademark rights in the OKX mark because of its extensive use of the mark and the widespread commercial and public acceptance of the mark as being the mark of the Complainant's business and of its identification with the Complainant. That has come about because of the prominence and reliability of the Complainant and its platform and its operation, extensive advertising and affiliation with prominent personalities such as Pep Guardiola and the Australians Daniel Ricciardo and Scotty James. The Panel also finds on the evidence that the Complainant acquired those rights at least from January 2022 when it first used the OKX mark and early in the same year when it obtained its first registration for the mark. It will be seen that those dates are prior to the registration of the disputed domain name by the Respondent on June 2, 2023.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's OKX registered and unregistered trademarks. The Complainant argues that the disputed domain name is confusingly similar to its OKX trademark because it consists of the mark itself, to which has been added the words  "the",  "crypto" and "field" to make up the wording "theokxcryptofield" in the domain name and adding also the gTLD ".com". The Panel agrees with the Complainant's submission in every respect because the domain name is similar to the domain name and confusingly so. Under Policy ¶ 4(a)(i), the addition of a generic, descriptive or commonly used expression word to a trademark such as the words  "the",  "crypto" and "field"  does not negate a confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. Indeed, the addition of the words "the", "crypto" and "field" implies that the domain name is referring to the OKX trademark and its official and legitimate use and adding the generic Top Level Domain cannot negate a confusing similarity that is otherwise present between a domain name and a trademark, as it is in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant, its OKX trademark and acronym and its use by the Complainant or with its approval and that the Respondent is using it legitimately. It is therefore clear that the domain name is similar to the trademark and confusingly so.

 

The Panel therefore finds that the Respondent's domain name is confusingly similar to Complainant's OKX mark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the 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) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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 on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:

 

(a)       the Respondent has chosen to take the Complainant's OKX trademark and to use it in its domain name, added only the words "the",  "crypto" and "field" to make up the wording "theokxcryptofield" in the domain name and adding also the gTLD ".com", none of which negates the confusing similarity between the domain name and the mark but exacerbates it, generating the clear impression that it is referring to and invoking the OKX trademark and its platform and that it is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created; 

(b)       the Respondent registered the disputed domain name on June 2, 2023, which it had no right to do and no legitimate interest in doing so;

(c)        in registering the domain name on June 2, 2023, the Respondent was clearly invoking the OKX trademark which the Complainant had been using in its business since at least January 2022;

(d)       the evidence shows that the Respondent is using the domain name for an imposter website to hold itself out falsely and pass itself off as the Complainant and to promote the Complainant's services as its own and for commercial purposes, even being brazen enough to use the Complainant's own trademark in that conduct. Such conduct cannot give rise to a right or interest in the domain name in any way;

(e)        the website to which the disputed domain name resolves features images taken from the Complainant's own OKX website and trades on the goodwill of the Complainant acquired in the OKX mark and brand. The Panel has examined the detail of the Respondent's website and it is obvious from doing so that the Respondent has simply engaged in the wholesale theft of the Complainant's copyrighted text and images and transposed them to the Respondent's site, claiming to be the Complainant and to being able to provide the same services as the Complainant. Again, such conduct cannot give rise to a right or interest in the domain name in any way;

(f)       equally obvious is the fact that the Respondent is phishing for internet users' personal and financial information which is even more reprehensible;

(g)       the Respondent is not commonly known by the domain name. There is no evidence to suggest that it is so known and no evidence to suggest why anyone named "frank godin", if that truly is the name of the Respondent, would answer to the name "theokxcryptofield.com" or anything remotely like it;

(h)       for completeness, the evidence shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is using the domain name to resolve to a website where it pretends to be the Complainant and purports to promote the Complainant's branded services by name. This is shown clearly by the material prepared by the Complainant and annexed to the Complaint which shows brazen plagiarism by the Respondent of the Complainant's promotion of its own products, with direct copying of material over which the Complainant clearly has copyright;

(i)       the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register the domain name or to use the OKX trademark in any way;

(j)       Nor can the Respondent's use of the domain name be said to be non-commercial in any sense as it is clearly intended to be used by the Respondent to make money illegally;

(k)       the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.

 

Complainant has correctly cited several prior UDRP decisions that support the foregoing contentions.

 

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.

 

Registration and Use in Bad Faith

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 that it 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.

 

The Complainant has relied on several grounds to show that this is so, and the Panel agrees with each of them. They are as follows.

 

First, it is clear from the evidence that the Respondent registered and used the disputed domain name to capitalize on the goodwill associated with the Complainant OKX mark and has sought to trade off that goodwill. Not to make too fine a point of it, the Respondent has stolen the Complainant's name, trademark, text and images and used them to try to make money illegally by being deceptive and fraudulent. Such behavior is clearly in bad faith.

 

Secondly, the fame and standing of the Complainant show that the Respondent had actual knowledge of the Complainant and its mark at the time it registered the domain name and that it therefore knew exactly what it was doing.

 

Thirdly, the evidence shows that the Respondent has passed itself off as the Complainant for a phishing scheme under which it can and is attempting to obtain internet users' personal and financial information. Thus, it is impersonating the Complainant, perpetrating a fraud, disrupting the Complainant's business and creating a likelihood of confusion with the Complainant's trademark as to the contents of the website to which the dispute domain name resolves. This is clearly established by the contents of the Respondent website at the disputed domain name. The clear intention of this material put up on the Respondent's website was to give the false impression that this website is the website of the Complainant or that it is there with the approval of the Complainant and that the Respondent is entitled to promote the Complainant's trademarked services for sale. Its effect must be to deceive potential customers and the community in general.

 

Such conduct is clearly in breach of Policy ¶ 4(b)(iii) and 4(b)(iv). Respondent has therefore registered and is using the domain name in bad faith.

 

Fourthly, the Respondent has used a privacy service in registering the disputed domain name to conceal its identity.

 

Fifthly, it is also relevant evidence that the United Kingdom Financial Conduct Authority has sanctioned the Respondent and warned the community against dealing with it.

 

It should also be noted that some of the Complainant's registered trademark applications have not come to fruition. However, most of the Complainant's trademarks were registered in July-September 2022 and thus before the domain name was registered on June 2, 2023. Thus, the Australian trademark was registered on February 18, 2022, long before the domain name was registered on June 2, 2023. Moreover, the Complainant clearly had common law or unregistered trademark rights in OKX from January 2022, well before the domain name was registered. Thus, the Respondent's bad faith registration and use of the domain name occurred when the Complainant had both registered and common law trademark rights towards which the Respondent's unprincipled registration and use were directed.

 

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the OKX trademark and in view of the conduct that the Respondent has engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has correctly cited several prior UDRP decisions that support all of the foregoing contentions.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <theokxcryptofield.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: November 6, 2023