Chainlink, a provider of smart contracts for the blockchain, operates from the domain name Chain.link. They have registered the marks CHAINLINK and LINK with the USPTO.
The company filed a UDRP against the domain LinkStake.com that according to the Complaint, competes and disrupts their services. The web site at LinkStake.com doesn’t make it clear about what they offer and there is a disclaimer in place that reads:
The sole panelist at the Forum (NAF) ordered the domain LinkStake.com to be transferred to the Complainant, because as archived captures show, they attempted to pass off as the Complainant’s associate.
SmartContract Chainlink, Ltd. v. Zolmeister Zolmeister
Claim Number: FA2208002009185
Complainant is SmartContract Chainlink, Ltd. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona, USA. Respondent is Zolmeister Zolmeister (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with CloudFlare, 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 the Forum electronically on August 19, 2022; the Forum received payment on August 19, 2022.
On August 19, 2022, CloudFlare, Inc. confirmed by e-mail to the Forum that the domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, 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 August 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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 [email protected] Also on August 22, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 21, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
Complainant, SmartContract Chainlink, Ltd., operates a blockchain supported network and is the industry standard oracle network for data used in smart contracts. To facilitate payment for its services, Complainant launched the cryptocurrency token LINK in December 2017 and this currently has a market capitalization of over USD $3 Billion. Complainant claims rights the trademarks CHAINLINK and LINK through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,240,233, registered Jan. 5, 2021, based on a Sep. 11, 2018 application) and IP Australia. Respondent’s domain name, registered on June 2, 2020, is identical or confusingly similar to Complainant’s LINK mark as it incorporates the mark in whole and adds the descriptive term “stake” and the “.com” generic top-level domain (“gTLD”) to form the disputed domain name.
Respondent lacks rights or legitimate interests in the domain name. Complainant has not authorized or licensed Respondent to use its LINK mark, nor is Respondent commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof. Rather, Respondent uses the similarity of the disputed domain name to impersonate Complainant and take advantage of the goodwill associated with Complainant’s mark to offer either fraudulent or competing services.
Respondent registered and uses the domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name to disrupt Complainant’s business and to attract users by impersonating Complainant. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the LINK and CHAINLINK marks. Finally, Respondent used a privacy service in the disputed domain name’s WHOIS information and failed to respond to Complainant’s cease-and-desist letters.
Respondent failed to submit a Response in this proceeding.
– Complainant has demonstrated its ownership of rights in the CHAINLINK and LINK trademarks and the domain name is confusingly similar to such marks;
– Respondent’s operation of a website that impersonates or competes with Complainant’s cryptocurrency services is not a bona fide use and there is no other evidence that Respondent possesses and rights or legitimate interests in the disputed domain name; and
– Respondent’s impersonation and competition with Complainant, along with its failure to respond to multiple cease-and-desist letters, indicates that it registered and used the disputed domain name 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”).
Identical and/or Confusingly Similar
Complainant claims rights in the LINK mark through its registration with the USPTO and IP Australia. Registration with such trademark agencies is generally sufficient to demonstrate rights in an asserted mark Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”) As Complainant has submitted copies of multiple trademark registration certificates for its claimed marks, the Panel finds that Complainant has rights in the LINK and CHAINLINK marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s domain name is identical or confusingly similar to Complainant’s LINK mark. Under Policy ¶ 4(a)(i), fully incorporating a mark in its entirety and adding a descriptive term typically fails to sufficiently distinguish a domain name from a registered mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”) Further, the addition of the “.com” gTLD is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Respondent’s domain name uses the entirety of the LINK mark and adds the descriptive terms “stake”, as well as the “.com” gTLD. Complainant asserts that addition of the word “stake” serves to increase confusion as this is a common term in the cryptocurrency and blockchain industries that relates to the transfer and investment of digital assets such as cryptocurrency. The Panel agrees and finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 contends that Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the LINK or CHAINLINK marks. Under Policy ¶ 4(c)(ii), where information in the WHOIS record reveals that a registrant’s name is materially different from the disputed domain name, this may indicate that a respondent is not commonly known by that domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM , FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See 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). Here, Respondent’s is identified as “Zolmeister Zolmeister” in the domain name’s WHOIS information which was revealed to the Forum by the concerned Registrar. Additionally, Respondent has not participated in this case and has thus provided no evidence to suggest that it was authorized to use Complainant’s LINK mark in the disputed domain name. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services, and that it does not make a legitimate non-commercial or fair use thereof. Impersonation of a complainant, by using its trademark in a disputed domain name and seeking to defraud or confuse users, indicates a lack of rights or legitimate interests by a Respondent. See President and Fellows of Harvard College v. Michael S. George / Harvard Business Council, FA 2003542 (Forum Aug. 25, 2022) (“The impersonation of a complainant in conjunction with a phishing scheme may indicate a lack of rights or legitimate interest in a disputed domain name.”) citing Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006). Additionally, use of a disputed domain name’s resolving webpage in order to offer competing goods or services may not qualify as a bona fide offering of goods or services nor as a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) Here, Complainant has supplied screenshots of Respondent’s original and current websites at the domain name. The original, pre-dispute, site displayed Complainant’s CHAINLINK logo and made multiples uses of the mark such as “Earn Chainlink Staking Rewards” and “The Simple, Secure Way To Stake Chainlink”, and “Stake Your Chainlink”. Complainant states that these claims refer to its LINK token which is a form of cryptocurrency used to pay for Complainant’s blockchain oracle services. Further, the “Chainlink Glossary” page of the website defines “LINK” as “Shorthand for Chainlink, a commonly used abbreviation” and it also contains the statement “Sergey Nazarov is the founder of Chainlink”. Finally, while the page contains a “LinkStake Risk Disclaimer” that mentions the potential loss of user funds, the original website contains no mention of the lack of a relationship with Complainant and so, to the extent that Respondent may actually be offering staking services, its activities fail to meet the standard set out in the seminal case of Oki Data Americas Inc v. ASD Inc, D2001-0903 (WIPO Nov. 6, 2001). As for the current version of the website, this was revised and posted after Complainant’s Representative sent a cease-and-desist letter to Respondent. It removes the content presented by the original site and includes the statement “We are not affiliated, associated, authorized, endorsed by, or in any way officially connected with SmartContract Chainlink Ltd, or any of its subsidiaries or its affiliates.” The Complaint asserts that the original website impersonates Complainant and purports to offer competing financial services under the CHAINLINK and LINK marks by tricking users into transferring their LINK tokens into Respondent’s platform under the guise that they will be staked (invested) with the user receiving optimized returns. The Panel finds this to be a reasonable and supported assertion, based on the available evidence, and Respondent has not filed a Response or made any other submission in this case to provide an alternate rationale for its use of the domain name. As Complainant has presented a prima facie case that has not been rebutted by Respondent, it finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith
Complainant asserts that Respondent registered the domain name with actual knowledge of Complainant’s CHAINLINK and LINK marks. Under Policy ¶ 4(a)(iii), actual knowledge can form a foundation for demonstrating bad faith registration and may be established by examining a respondent’s use of a disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant claims that its CHAINLINK and LINK marks are well-known and widely used and it provides copies of its own website, blogs, and news stories demonstrating that its blockchain oracle services are used and supplied by such companies as AccuWeather, the Associated Press, and others. Additionally, Respondent has used the disputed domain name’s resolving webpages to impersonate Complainant through the use of Complainant’s mark and logo. From this evidence, the Panel finds that Respondent had actual knowledge of and specifically targeted Complainant’s CHAINLINK and LINK marks at the time that it registered the domain name.
Complainant further argues that Respondent registered and used the domain name to attract Internet users and offer possibly fraudulent services while impersonating Complainant or, at a minimum, disrupt Complainant’s business by offering services in direct competition with Complainant. Panels have found bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) when a respondent uses a confusingly similar domain name to attract Internet users and monetarily capitalize on that confusion. See Expedia, Inc. v. Euwen Spence Jr, FA 2006812 (Forum Aug. 26, 2022) (“Complainant provides screenshots of Respondent’s resolving webpage showing advertisements for the same services that Complainant offers.”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). In this same vein, use of a disputed domain name to impersonate a complainant supports a finding of bad faith registration and use. See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass itself off as the complainant and offer for sale competitive, counterfeit goods). As noted in the previous section, Complainant’s provides screenshots of Respondent’s original, pre-dispute, website which show multiple uses of the CHAINLINK mark and its associated graphic logo with no indication that the site is unrelated to Complainant. The site also invites users to invest their LINK tokens through Respondent’s staking service. With respect to Policy ¶ 4(b)(iii), the Panel considers Respondent’s claimed cryptocurrency staking activities to be so closely related to the cryptocurrency product offered by Complainant such that competition exists. Further, with respect to Policy ¶ 4(b)(iv), the evidence is compelling that Respondent attempted to pass itself off as and impersonate Complainant through the use of Complainant’s mark and logo and Respondent has not participated in this case to otherwise explain its activities. While Respondent changed its website content and added a disclaimer of affiliation after Complainant sent its initial demand letter placing Respondent on notice of the present dispute, such post hoc alterations do not cure the initial bad faith use of the disputed domain name. See LEGO Juris A/S v. Cuong Nguyen Viet, D2018-0097 (WIPO Mar. 2, 2018) (Finding of bad faith supported by Respondent’s modification of its website content subsequent to receiving Complainant’s initial cease-and-desist letter).
Complainant also asserts that Respondent’s failure to respond to multiple cease-and-desist letters is further evidence of Respondent’s bad faith. Prior decisions have held that failure to respond to a cease-and-desist letter may indicate bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). In this case, Complainant provides evidence of Complainant’s attempts to contact Respondent through two cease-and-desist letters. While alone such failure may not be proof of bad faith, when considered along with all of the circumstances of this case, i.e., Respondent’s impersonation of Complainant, the alteration of its website after receiving the first letter, and Respondent’s failure to participate in these proceedings, the Panel agrees and finds that Respondent’s silence further supports a finding of bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant asserts that “Respondent registered the Disputed Domain through a privacy service” and that “Respondent’s use of a privacy service to hide its identity, is persuasive evidence of bad faith registration and use.” Use of false or misleading WHOIS information, including the use of a privacy shield, can suggest bad faith registration and use. See, e.g., Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018). Here, in support of its assertion, Complainant submits a copy of the public WHOIS record for the domain name. The Panel notes that most of the fields in this record display the phrase “DATA REDACTED” and the email fields only identify a contact link at Respondent’s Registrar. However, the Panel is aware that, in response to privacy laws such as the European Union’s General Data Protection Regulation (“GDPR”), some registrars have, by their own initiative, masked identifying information for nearly all domain name registrants. As the public WHOIS record for the domain name does not specifically mention a registrant-selected privacy service, the Panel declines to find that the non-disclosure of Respondent’s identity implicates the question of whether the disputed domain name was registered and used 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 domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 27, 2022
Copyright © 2022 DomainGang.com · All Rights Reserved.