Coinbase, Inc. v. zhuang qi yu
Claim Number: FA2202001983972
Complainant is Coinbase, Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is zhuang qi yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coinbase.info>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2022; the Forum received payment on February 10, 2022.
On February 13, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <coinbase.info> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 8, 2022 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@coinbase.info. Also on February 16, 2022, the Chinese and English language 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 March 7, 2022.
On March 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the Respondent is conversant and proficient in the English language. Therefore, after considering the circumstance of the present case and the fact that Respondent has failed to object to going forward in English, the Panel finds that the instant proceeding should continue in English.
A. Complainant
Complainant contends as follows:
Complainant is an online cryptocurrency trading platform.
Complainant has rights in the COINBASE mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <coinbase.info> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.info” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <coinbase.info> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed respondent to use its COINBASE mark in the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked, pay-per-click links on its <coinbase.info> website.
Respondent registered and uses the <coinbase.info> domain name in bad faith. Respondent offers the domain name for sale. Respondent hosts parked, pay-per-click links on the disputed domain name’s resolving website. Respondent registered the domain name with actual knowledge of Complainant’s rights in the COINBASE mark.
B. Respondent
Respondent contends as follows:
Respondent has been operating as “Coinbase Studio” with a Chinese character since 2012. Respondent is in the business of coin trading and appraisal, which is completely different from Complainant’s business. The <coinbase.info> domain name, along with the Respondent’s business name and Chinese characters, describes the business. The Respondent’s COINBASE mark is registered in a different country than Complainant’s.
Respondent uses the name in connection with the bona fide offering of goods or services described above. Respondent obtained the COINBASE Chinese trademark from a third party who owned the mark.
Respondent did not register and does not use the <coinbase.info> domain name in bad faith. Respondent did not elect to have pay-per-click links parked on the domain name’s resolving website. The price listed online is the minimum price set by the registrar. Respondent purchased the domain name for brand protection.
C. Additional Submissions
Complainant’s Additional Submission
Complainant contends in its Additional Submission as follows:
Respondent’s own documents demonstrate in multiple instances that it operates in the same industry as Complainant, in the same country as Complainant, the U.S.
Respondent’s Wechat account shows Respondent has registered an additional infringing domain name to provide information on news in the crypto industry.
Respondent’s activities do not, in fact, relate to coin appraisal and trading. Respondent’s documents showing that it is a business representative of “Shanghai Biku” also show that Shanhai Biku’s business is in the business of operating multiple cryptocurrency websites that have servers in the U.S., Canada, and China. The terms of the domain name relate to cryptocurrency mining.
Respondent’s claimed rights in the COINBASE mark do not predate Complainant’s registration in 2012, as the claimed registions were not filed until 2013 and registered under 2014. The classes of products covered by Respondent’s claimed registration are not in coin trading and appraisal but are in computer sofitware and design, database, access, and other related areas to Complainant’s business.
Respondent’s alleged business operating as “Coinbase” with a Chinese character is not legitimate, but a scam perpetuated to lend leigitmacy to its infringin business. Respondent’s claim that they have used the COINBASE mark since 2012 is not supported by their documents. There are discrepancies between the dates of the same supposed agreement, there is no corroboration of the agreement with other parties. The online “accounts” provided by Respondent are undated, and could have been created at any time. They are likely self serving pretexts used by Respondent to create the illusion of legitimate use. Furthermore, the Wechat account provided Respondent only has 14 posts, only one follower, and no products offered. Parking of domain names is demonstrative of bad faith regardless of whether Respondent or the Registrar parked them.
Respondent’s Additional Submission
Respondent contends in its Additional Submission as follows:
Complainant actually operated in cryptocurrencies, not cryptography and blockchain, which are Respondent’s uses of the other infringing domain name’s resolving website.
Respondent reiterates its arguments that it operates in the ancient coins industry with the current domain name.
Respondent’s agreements provided include handwritten signatures.
Complainant’s citation of precedent is inappropriate as demonstrated by the actual circumstances of this case.
Complainant has rights in the COINBASE mark though its registration of such mark with a national registrar.
Complainant’s rights in COINBASE existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent has rights in COINBASE through assignments of the mark’s national trademark registrations.
Respondent uses the at-issue domain name to address a parking page displaying pay-per-click links.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in its COINBASE mark via the mark’s registration with the USPTO. Any national registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <coinbase.info> domain name contains Complainant’s COINBASE trademark followed by the top-level domain name “.info.” The slight difference between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish Respondent’s <coinbase.info> domain name from the COINBASE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <coinbase.info> domain name is confusingly similar to Complainant’s COINBASE mark. See Infineon Technologies AG v. mustafa mashari, FA 1619868 (Forum June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Complainant’s asserts that Respondent is not authorized to use Complainant’s trademark in any capacity and that there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <coinbase.info> identifies the domain name’s registrant as “Zhuang Qi Yu,” and the record before the Panel contains no evidence showing that Respondent is commonly known by COINBASE or by <coinbase.info>. Thus, Complainant claims Respondent is not commonly known by the <coinbase.info> domain name for the purposes of Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Additionally Complainant shows that Respondent uses <coinbase.info> to address a website or parking page that displays pay-per-click links. Respondent claims it is not responsible for the parking page and its content as the parking page was implemented by the domain name’s registrar. However, a domain name’s registrant, here Respondent, is indeed responsible for the content of a website referenced by its domain name. See Park ‘N Fly Service Corporation v. Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that it is ultimately “the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”). Generally, Respondent’s use of the domain name to host pay-per-click links is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. 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).”). Respondent also offers the domain name for sale. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Given the foregoing, Complainant makes a prima facie showing that Respondent lacks rights and legitimate interests in <coinbase.info>.
Notwithstanding the foregoing, Respondent presents evidence that it has conducted business under or related to a name identical to the at-issue domain name’s second level and that such name is descriptive. See JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also, Navigant Consulting, Inc. v. Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”); see also Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name).
However, Respondent not need demonstrate it has conducted business under the name COINBASE nor rest its claims of rights or legitimate interest on the descriptive nature of Complainant’s trademark to show it has rights in the <coinbase.info> domain name since Respondent unequivocally shows that it too has trademark rights in COINBASE. Significantly, Respondent demonstrates it has trademark rights in COINBASE based on Chinese trademark registrations for COINBASE that are assigned to Respondent. In support thereof, Respondent provides copies of registrations and assignments from the mark holder showing that Respondent is entitled to use the COINBASE mark from April 29, 2020 to October 13, 2024. See Remithome Corp v. Pupalla, FA 1124302 (Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). Respondent’s trademark rights are presumptively valid and Complainant has not successfully discredited the relevant documents offered in support of Respondent’s trademark rights.
Complainant claims that even if Respondent is authorized to use the proffered trademark registrations Complainant’s trademark rights predate such registrations/assignments in COINBASE and are thus superior to Respondent’s rights. Complainant further implies that since the Chinese registrations/assignments do not cover products or services related to Respondent’s claimed business area any rights in COINBASE resulting from the Chinese registrations are inferior to Complainant’s rights. However, under Policy ¶ 4(a)(ii) there is no requirement that Respondent’s rights be superior to those of Complainant in order to demonstrate rights in the at-issue domain name. To prevail under paragraph 4(a)(ii) Complainant must ultimately show that Respondent has “no rights or legitimate interests in respect of the [at-issue] domain name.” For Respondent to prevail under Policy ¶ 4(a)(ii) Respondent need only have some rights or legitimate interests, and it does. Therefore, Complainant does not meet it burden of proof per Policy ¶ 4(a)(ii).
The Panel concludes that Complainant has not met its burden under Policy ¶ 4(a)(ii). Since Complainant must prove all three elements under the Policy, the Panel declines to analyze the third element.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <coinbase.info> domain name REMAIN WITH Respondent.
Paul M. DeCicco. Panelist
Dated: March 17, 2022
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