BlockFi Inc. v Redacted for Privacy, Privacy service provided by Withheld for

WIPO Case No. D2022-2702

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BlockFi Inc. v. Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf / Idongesit Udo-Umo, 003 Concept

Case No. D2022-2702

1. The Parties

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

U.S.

The Respondent is Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf, Iceland /

Idongesit Udo-Umo, 003 Concept, Canada.

2. The Domain Name and Registrar

The disputed domain name <blockfichain.com> (‘the Domain Name’) 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 25, 2022. On

the same day, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. Also on July 25, 2022, the Registrar transmitted by email to the Center
its verification response disclosing registrant and contact information for the Domain Name which differed

from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on July 29, 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 3, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the the due date for Response was August 23, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 24, 2022.

page 2

The Center appointed Dawn Osborne as the sole panelist in this matter on August 31, 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 active in cryptocurrencies and financial and wealth management products. Its platform manages more than USD 2 billion in assets and is backed by industry-leading investors.

The Complainant is the owner of the mark BLOCKFI, registered in the U.S. for financial services under trade mark registration 5989814 since 2020. It owns the domain name <blockfi.com>.

The Domain Name registered in February 2022, has been used for competing cryptocurrency services.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the mark BLOCKFI, registered in the U.S. for financial services since 2020.
It owns the domain name <blockfi.com>.

The Domain Name registered in 2022 is confusingly similar to the Complainant’s BLOCKFI mark containing it in its entirety and adding the word “chain” and the generic Top-Level Domain (“gTLD .com”) which does not

prevent said confusing similarity.

The Respondent does not have any rights to or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

The Domain Name has been pointed to a site offering competing cryptocurrency services. This is not a bona fide offering of goods or services. It is registration and use in bad faith causing confusion amongst Internet

users and disrupting the Complainant’s business having been done in actual knowledge of the

Complainant’s rights for suspected phishing purposes.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consists of the Complainant’s BLOCKFI mark (which is registered in the U.S. for financial services since 2020), the dictionary word “chain” and the gTLD “.com”.

The addition of a term and a gTLD does not prevent a finding of confusing similarity between a domain name

and a trade mark contained within it. As such the addition of the dictionary word “chain” and the gTLD

“.com” to the Complainant’s BLOCKFI mark does not prevent a finding of confusing similarity between the

Domain Name and that mark which is still recognisable within the Domain Name.

page 3

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered

mark.

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As stated in WIPO Overview 3.0, “while the overall burden of proof in UDRP proceedings is on the

complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a

domain name may result in the often impossible task of ‘proving a negative’, requiring information that is

often primarily within the knowledge or control of the respondent. As such, where a complainant makes out
a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this
element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate

interests in the domain name. If the respondent fails to come forward with such relevant evidence, the

complainant is deemed to have satisfied the second element”.

The Complainant has not authorised the use of its BLOCKFI mark by the Respondent. There is no corroborating evidence apart from the Domain Name and the site attached to it, to suggest the Respondent is commonly known by the Domain Name.

The use of the Domain Name is commercial and so cannot be legitimate noncommercial fair use.

The website attached to the Domain Name uses the Complainant’s BLOCKFI mark to offer competing

cryptocurrency services and to suggest a commercial connection with the Complainant. The Panel finds this
use is confusing. As such it cannot amount to the bona fide offering of goods and services. (There is no

actual evidence of phishing submitted with the Complaint.)

The Respondent has not answered this Complaint or offered any explanation, to rebut the Complainant’s

prima facie case.

As such the Panelist finds that the Respondent does not have rights to or a legitimate interest in the Domain

Name and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

In the opinion of the panelist the registration of the Domain Name and the use made of the Domain Name in

relation to the Respondent’s website is confusing and disruptive in that visitors to the site might reasonably

believe it is connected to or approved by the Complainant as the Complainant’s BLOCKFI mark is used

without permission for competing cryptocurrency services. Given the use of the Domain Name for
specialised competing cryptocurrency services it is more likely than not that the Respondent knew about the

Complainant, its business, rights and services.

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain

Internet users to his website by creating a likelihood of confusion with the Complainant’s trade mark as to the

source, sponsorship, affiliation or endorsement of the website and services offered on it likely to disrupt the
business of the Complainant.

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).

page 4

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 Domain Name, <blockfichain.com> be transferred to the Complainant.

/Dawn Osborne/

Dawn Osborne

Sole Panelist
Date: September 14, 2022