BlockFi Inc. v Devpartners Technologies

WIPO Case No. D2022-2698

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BlockFi Inc. v. Devpartners Technologies

Case No. D2022-2698

1. The Parties

The Complainant is BlockFi Inc., United States of America (“United States”), represented by Haynes and

Boone LLP, United States.

The Respondent is Devpartners Technologies, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <blockficryptotrading.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2022. On
July 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 25, 2022, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Privacy Service Provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
July 25, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

August 1, 2022.

The Complainant submitted a request for suspension and the proceedings were suspended on August 4,
2022. The Complainant submitted a request for reinstitution and the proceedings were reinstituted on

September 12, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on September 14, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was October 4, 2022. The Respondent did not submit a formal
Response. Accordingly, the Center notified the parties that it would proceed to panel appointment on
October 5, 2022.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 1, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a financial services company founded in 2017 dedicated to building a bridge between cryptocurrencies and traditional financial and wealth management products.

The Complainant owns the United States trademark BLOCKFI (Reg. No. 5989814, registered on
February 18, 2020).

The Complainant further holds the domain name <blockfi.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <blockfi.com> domain name.

The disputed domain name was registered on August 25, 2021, and resolved to a website purporting to offer cryptocurrency investment services and incorporating the Complainant’s trademark. At some point in time, the website has been deactivated.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

The Respondent sent informal communications to the Center on July 25, 2022, and July 29, 2022. The
Respondent did not submit a formal Response.

In its two informal email communications, the Respondent mainly expressed that it was a web development agency building websites for customers. It asked for the disputed domain name to be deleted from its account because it had no interest in it.

In line with the Panel’s authority pursuant to the Rules, paragraph 10, the Panel has considered the Respondent’s unsupported assertions, and notes that the Respondent’s submissions do not alter the outcome of the case. In addition, the Panel notes that the Respondent claims to be building websites for customers, but no further explanation has been provided regarding the Respondent registering the disputed domain name for a third party (which identity, if there is such a third party, is undisclosed). Therefore, the Panel considers the Respondent to be the registrant against which the amended Complaint was filed, and further notes that references to the registration and use by the Respondent shall be construed to include the final holder of the disputed domain name (if any).

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6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and

(c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the BLOCKFI trademark.

The BLOCKFI trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “cryptotrading” (which is connected to the Complainant’s business) to the Complainant’s BLOCKFI trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of
the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the
Complainant nor making any bona fide use of the disputed domain name.

The Respondent used the disputed domain name to advertise cryptocurrency investment services. The Complainant has credibly alleged that the Respondent used the disputed domain name for generating revenue while taking advantage of the Complainant’s trademark notoriety. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademark and an additional term (which in the Panel’s view is likely meant to appear connected to the Complainant’s area of activity), cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the

Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

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The Panel finds that the reproduction of the Complainant’s trademark along with the term “cryptotrading” creates a likelihood of confusion between the Complainant’s trademark and the disputed domain name.

The evidence and allegations submitted by the Complainant support a finding that the Respondent was using the disputed domain name in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website for its own commercial benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466).

Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <blockficryptotrading.com> be transferred to the Complainant.

/Tobias Zuberbühler/
Tobias Zuberbühler
Sole Panelist
Date: November 10, 2022