BlockFi Inc. v john terry

WIPO Case No. D2023-0954

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BlockFi Inc. v. john terry

Case No. D2023-0954

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 john terry, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <blockficloud.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 March 3, 2023. On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2023, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2023 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 March 11, 2023.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 16, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 5, 2023. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 6, 2023.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 18, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

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

The Complainant is the owner of United States Trademark No. 5989814 BLOCKFI, registered on February
18, 2020, for services in classes 36 and 42.

Also, the Complainant owns the domain name <blockfi.com> registered on September 27, 2015 which resolves to the webpage in which it offers and promotes its services.

The disputed domain name <blockficloud.com> was registered on September 28, 2022 and currently does not resolve to an active webpage. The website was taken offline following a copyright infringement Complaint made by the Complainant to the webhost of the infringing website. Historical screenshots show that the disputed domain name previously resolved at a website purporting to offer cryptocurrency financial services using a logo nearly identical to the Complainant’s stylized logo.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it operates worldwide, that the BLOCKFI trademark enjoys widespread recognition and has generated significant goodwill.

The Complainant has been referenced by several high-profile media outlets since its start in 2017.
Additionally, it is active on social media, including on Twitter (which it joined in November 2017), Facebook
(which it joined in February 2018), and YouTube (which it joined in January 2019) where it posts numerous
videos and podcasts on blockchain technology, cryptocurrency, and wealth management.

The Complainant claims that the disputed domain name is confusingly similar with the trademark BLOCKFI in which the Complainant has rights and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

More specifically, the Complainant has no relationship or affiliation with the Respondent.

The Complainant has not authorized or licensed the use of the trademark BLOCKFI to the Respondent.
Further, the Respondent is not commonly known by the disputed domain name.

Although the disputed domain name does not currently resolve to an active website, historical screen shots show that the disputed domain name previously resolved to a website purporting to offer cryptocurrency financial services using a logo nearly identical to the Complainant’s stylized logo.

The Complainant believes that the disputed domain name has been registered for the sole reason of
commercial gain by means of misleadingly diverting consumers seeking the Complainant to the
Respondent’s website.

Finally, the Complainant requests the Panel to issue an order to have the disputed domain name transferred to the Complainant.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i)        the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the

disputed domain name is confusingly similar with the trademark. The test involves a side-by-side
comparison of the disputed domain name and the textual components of the relevant trademark to assess
whether the mark is recognizable within the disputed domain name.

The Panel considers that the disputed domain name is confusingly similar with the Complainant’s BLOCKFI trademark.

The disputed domain name incorporates the Complainant’s trademark BLOCKFI in its entirety with the addition of the term “cloud”, which does not prevent a finding of confusing similarity. Section 1.8 of WIPO Overview 3.0 provides that when the relevant trademark is recognizable within the disputed domain name - as it occurs in this case- the addition of a term would not prevent a finding of confusing similarity under the first element.

The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is
generally disregarded under the first element confusing similarity test, as set forth in section 1.11.1 of WIPO
Overview 3.0.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark BLOCKFI in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:

(i)

before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, of goods or services; or

(ii)       the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

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(iii)      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in
a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a
complainant is required to make out a prima facie case that the respondent lacks rights or legitimate
interests in the domain name. Once such prima facie case is made, the burden of production shifts to the
respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the
disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant
is deemed to have satisfied the second element.

There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a high risk of implied affiliation.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark BLOCKFI mentioned in section 4 above (Factual Background) when it registered the disputed domain name on September 28, 2022. By that time, the Complainant had several years before registered and intensely used the trademark BLOCKFI and the domain name <blockfi.com>.

By registering the disputed domain name that includes the Complainant’s trademark BLOCKFI in its entirety the Respondent was targeting the Complainant and its business. The addition of the word “cloud”, very much related to the business of the Complainant, only contributes to confuse Internet users and leads them to think that the relevant website belongs to or is endorsed by the Complainant with the intention to capitalize on the fame of the Complainant’s trademark for its own benefit.

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name, the nature of the disputed domain name and the former use of the disputed domain name to resolve to a website offering similar services that compete with those offered by the Complainant, are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

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The fact that the disputed domain name does not currently resolve to an active webpage, in the circumstances of the case does not prevent a finding of bad faith under the “passive holding” doctrine (as stated in section 3.3 of the WIPO Overview 3.0).

For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.

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 <blockficloud.com> be transferred to the Complainant.

/Miguel B. O’Farrell/
Miguel B. O’Farrell
Sole Panelist
Date: May 2, 2023