DECISION

 

The Optimism Foundation v. Jerry Tomphson / ThomspnJ

Claim Number: FA2403002090230

 

PARTIES

Complainant is The Optimism Foundation ("Complainant"), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Jerry Tomphson / ThomspnJ ("Respondent"), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <superchain-optimism.com>, <superchain-optimism.net>, <super-optimism.com>, <super-optimism.net>, <optimism-superchain.com>, <optimism-superchain.net>, <optimism-super.com>, <optimism-super.net> and <optimism-reward.net>, registered with Cosmotown, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 25, 2024; Forum received payment on March 25, 2024.

 

On March 27, 2024, Cosmotown, Inc. confirmed by e-mail to Forum that the <superchain-optimism.com>, <superchain-optimism.net>, <super-optimism.com>, <super-optimism.net>, <optimism-superchain.com>, <optimism-superchain.net>, <optimism-super.com>, <optimism-super.net> and <optimism-reward.net> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, 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 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2024, 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@superchain-optimism.com, postmaster@superchain-optimism.net, postmaster@super-optimism.com, postmaster@super-optimism.net, postmaster@optimism-superchain.com, postmaster@optimism-superchain.net, postmaster@optimism-super.com, postmaster@optimism-super.net and postmaster@optimism-reward.net. Also on April 1, 2024, 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 April 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a global leader in facilitating fair access to the blockchain and related financial transactions on the Internet by providing an easy and secure platform for the execution of digital currency dealings.

 

Complainant holds a registration for the service mark OPTIMISM, which is registered with the United States Patent and Trademark Office ("USPTO") as Registry No. 7,140,145, registered on August 15, 2023.

 

Complainant does business online at the address <optimism.io>, which was registered as of May 19, 2015.

 

Complainant also has rights in the mark SUPERCHAIN under the common law, which is the subject of an application for registration with the USPTO as a service mark filed on July 28, 2023, and which application was made subject to a Notice of Allowance on February 26, 2024.

 

Complainant employs the SUPERCHAIN mark to market its proprietary blockchain protocol product for facilitating cross-compatibility and interoperability between different blockchains.

 

Complainant is the creator of the Optimism cryptocurrency token, which is traded on cryptocurrency exchanges under the symbol "OP." 

 

Respondent registered all of the following domain names in the period from February 28 through March 2, 2024: <superchain-optimism.com>, <superchain-optimism.net>, <super-optimism.com>, <super-optimism.net>, <optimism-superchain.com>, <optimism-superchain.net>, <optimism-super.com>, <optimism-super.net> and <optimism-reward.net>.

 

All of the domain names are confusingly similar to one or both of Complainant's OPTIMISM or SUPERCHAIN marks.

 

Respondent is not affiliated with Complainant in any way.

 

Complainant has never granted to Respondent either a license or other authorization to use either of the OPTIMISM or SUPERCHAIN marks.

 

Respondent used a privacy service to register all of the domain names, as a consequence of which Respondent is not identified in the applications for registration of any of them.

 

Respondent has no rights in either of the OPTIMISM or SUPERCHAIN marks under the common law, nor has Respondent filed an application for registration of either of those marks with a trademark authority anywhere in the world.

 

Respondent is not making a bona fide offering of goods or services by means of any of the domain names, nor is Respondent making a legitimate noncommercial or fair use of any of them.

 

Rather, Respondent employs the disputed domain names to resolve to websites that nearly exactly mimic Complainant's official website, and which counterfeit websites Respondent uses to attempt to steal funds from unsuspecting Internet users by passing itself off as Complainant online and acting to induce those users to connect their cryptocurrency wallets to Respondent's electronic interface.

 

Respondent has no rights to or legitimate interests in any of the domain names.

 

Respondent knew of Complainant and its rights in the OPTIMISM and SUPERCHAIN marks when it registered the domain names.

 

Respondent both registered and is now using all of the domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and

(2)       Respondent has no rights to or legitimate interests in respect of any of the domain names; and

(3)       the same domain names were registered and are being used by Respondent in bad faith.

 

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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.                      Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.                      the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But 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

By virtue of its registration of the OPTIMISM service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claims against Respondent in this proceeding.  See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <super-optimism.com>, <superchain-optimism.com>, <superchain-optimism.net>, <super-optimism.net>, <optimism-superchain.com>, <optimism-super.com>, <optimism-superchain.net>, <optimism-super.net> and <optimism-reward.net> domain names are all confusingly similar to Complainant's OPTIMISM service mark. All of the domain names incorporate the mark in its entirety, with only the addition of a hyphen (-) and one or the other of the generic Top Level Domains ("gTLD's") ".com" or ".net," plus either of the terms "super" or "superchain," both being plain references to Complainant's SUPERCHAIN product, and, in one instance, the generic business/marketing term "reward."  These alterations of the mark, made in creating the domain names, do not enable them to escape the realm of confusing similarity under the standards of the Policy.

 

See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):

 

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

This is because every domain name requires a gTLD or other TLD.

 

See also: Disney Enterprises, Inc. v. Michael Blank, FA 2008266 (Forum Sept. 9, 2022), concluding, under Policy ¶ 4(a)(i), that a respondent's addition of the terms "plus" and "day" to the mark of another in forming a domain name did not avoid a finding of its confusing similarity with respect to a UDRP complainant's trademark. Further to the point, see Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016), finding that the addition of the terms "free" and "games" to the mark of a UDRP complainant in creating a domain name left the result confusingly similar that mark.

 

Finally, under this head of the Policy, Respondent's addition of a hyphen to Complainant's OPTIMISM mark in creating each of the domain names is of no consequence to our analysis. This is because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.  See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

Policy ¶ 4(a)(ii) requires that Complainant make a prima facie showing that Respondent has neither rights to nor legitimate interests in the <super-optimism.com>, <superchain-optimism.com>, <super-optimism.net>, <superchain-optimism.net>, <optimism-superchain.com>, <optimism-super.com>, <optimism-superchain.net>, <optimism-super.net> and <optimism-reward.net> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):

 

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.

 

We begin by noting that Complainant suggests, and Respondent does not deny, that there is no evidence indicating that Respondent has been commonly known by any of the challenged domain names, and that Complainant has not licensed or otherwise authorized Respondent to use either the OPTIMISM mark or its claimed SUPERCHAIN mark. Moreover, the pertinent WHOIS information does not identify the registrant of the domain names, but available sources indicate that Respondent is known only as "Jerry Tomphson / ThomspnJ," which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).

                                                            

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain names to resolve to websites that nearly exactly mimic Complainant's official website, and which counterfeit websites Respondent employs to attempt to steal funds from unsuspecting Internet users by passing itself off as Complainant online and acting to induce those users to connect their cryptocurrency wallets to Respondent's electronic interface. It should go without saying that this employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy.  See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016):

 

Respondent['s] use[] [of] the at-issue domain name to pose as Complainant's CEO is not a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

To the same effect, see also Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited, FA 2012849 (Forum Oct. 27, 2022), finding that a website which mimicked a UDRP complainant's official website was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of a challenged domain name under Policy ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence accompanying the Complaint that Respondent's use of the disputed domain names, which we have found to be confusingly similar to Complainant's OPTIMISM mark and claimed SUPERCHAIN mark is an attempt by Respondent to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant's association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent's bad faith in registering and using the domain names. See, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017), finding bad faith in the registration and use of a contested domain name under Policy ¶ 4(b)(iv) on facts indicating that:

 

Respondent registered and uses the 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.

 

It is also plain from the evidence attached to the Complaint that Respondent knew of Complainant and its rights in the OPTIMISM mark and claimed SUPERCHAIN mark when it registered the offending domain names. This further demonstrates Respondent's bad faith in registering them. See, for example, Coinbase, Inc. v. tiago Salvador, FA 1982973 (Forum Mar. 2, 2022):

 

[R]egistering a confusingly similar domain name with actual knowledge of a complainant's rights in an incorporated mark is evidence of bad faith registration … for the purposes of Policy ¶ 4(a)(iii).

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

  

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <superchain-optimism.com>, <superchain-optimism.net>, <super-optimism.com>, <super-optimism.net>, <optimism-superchain.com>, <optimism-superchain.net>, <optimism-super.com>, <optimism-super.net> and <optimism-reward.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

________________________________

Terry F. Peppard, Panelist

Dated: May 1, 2024