WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coinsilium Holdings Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Jeff Emery
Case No. D2017-1741
1. The Parties
The Complainant is Coinsilium Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Cohen Davis Solicitors, United Kingdom.
The Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama / Jeff Emery of Pueblo, Colorado, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <coinsiliuminvest.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 September 11, 2017 against WhoisGuard Protected, WhoisGuard, Inc. and Ronald Linco).The Privacy Service had advised the Complainant that it was merely providing a privacy service and named Ronald Linco as the registrant. On September 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Respondent and its contact information as set out in the Complaint.
On September 15, 2017, the Center sent an email communication to the Complainant 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 September 19, 2017, adding Jeff Emery, and on the same date by email filed a further addition thereto setting out the reliefs sought.
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 September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. .On September 29, 2017, the Complainant submitted supplemental filings to the Center. No Response or other communication has been received from the Privacy Service or Jeff Emery. Accordingly, the Center notified the Respondent's default on October 13, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on October 26, 2017. 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.
On September 16, 18 and 22, 2017, the Center received different email communications from a third party, which will be referred below.
4. Factual Background
The Complainant is the owner of UK Registered Trademark COINSILIUM device, registration number UK00003130185, filed on October 6, 2015, entered on the register on January 1, 2016 for listed financial services in class 36.
The Complainant is also the owner the domain name <coinsilium.com> and maintains a website at "www.coinsilium.com".
The disputed domain name was created on June 3, 2017 and resolves to an active phising website which provides links to the Complainant.
5. Parties' Contentions
The Complainant submits that its core business is investment finance and management of development of early-stage blockchain technology companies and has a portfolio of interests in fast-growing blockchain companies from around the world, including United Kingdom, France, United States, China, Singapore, Israel and Argentina. The Complainant asserts that it has an established Internet presence through its said website at "www.coinsilium.com" since 2014.
The Complainant relies on its rights in the above referenced United Kingdom registered trademark and submits that the disputed domain name is confusingly similar to its COINSILIUM trademark arguing that the disputed domain name comprises of the Complainant's name together with the word "invest" which has a strong association with the Complainant's business.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent is using the disputed domain name to resolve to a website which falsely asserts links with the Complainant, to capitalize on the Complainant's goodwill and to induce innocent investors to transfer money to the Respondent under the false pretense of the Respondent's affiliation with the Complainant. In a nutshell, the Respondent is using the disputed domain name to create a phishing website with the intention to mislead members of the public that they deal with the Complainant.
In support of this assertion the Complainant has submitted evidence that the disputed domain name resolves to a website which displays the Complainant's name and on its login page it displays the Complainant's logo with a hyperlink to the Complainant's website. Other webpages on the website consist of the name of the Complainant, images of its legal officers and further copies of the Complainant's trademark. The Complainant claims ownership of the copyright in said logo and photographic images of its officers.
The Complainant submits that the Respondent purchased the disputed domain name for the purpose of creating a website that will mislead innocent Internet users and alleges that the Respondent is making illegitimate commercial use of the domain name with the intention for commercial gain by misleadingly diverting consumers and by tarnishing the trademark owned by the Complainant.
The Complainant further submits that the disputed domain name was registered and is being used in bad faith in that the domain name was registered for the primary purpose of phishing. In support of this assertion the Complainant has submitted copies of the pages from the website to which the disputed domain name resolves which show the inclusion of the Complainant's name in the domain name and address of the Respondent's website; the inclusion of the Complainant's registered trademark and images of the Complainant's legal officers, the use of the Complainants' full name and trademark and postal address on the website, including on payment confirmation pages and emails addresses associated with the disputed domain name; and hyperlinks to the Respondent's website to create the false impression that payment was made to the Complainant.
The Complainant submits that it is therefore clear that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant and that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent's website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to 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 has been registered and is being used in bad faith.
A. Preliminary Issue: Supplemental Filing by the Complainant
On September 29, 2017, the Complainant submitted a Supplemental Filing to the Center. This Panel finds that it is not necessary to admit this Supplemental Filing as, for reasons set out below, there was sufficient uncontroverted evidence submitted with the Amended Complaint to find in favour of the Complainant and grant the relief sought in the Complaint.
B Respondent's identity
According to WhoIs records, the registrant of the disputed domain name has made use of a proxy service as WhoisGuard Protected, established in Panama. The Complainant wrote to said proxy service before the commencement of this proceeding and, in reply, on July 31, 2017, the Complainant received information identifying an individual as the registrant, and providing its email address and contact details. Upon submission of this Complaint, the Center sought verification of the registration from the Registrar, which confirmed that the disputed domain name is registered by the above-mentioned Respondent Jeff Emery.
However, on September 16, 18 and 22, 2017, the Center received different email communications from a third party using the same email address as the one provided by the proxy service before this UDRP proceeding in its communication of July 31, 2017. This third party stated, inter alia, that "we are not the owner of that domain. We registered it for a client and it is not our information behing whois guard", or "We have nothing to do with that dispute. We registered it for a 3rd party. See with them directly".
There is no evidence other than a statement of the proxy service that Ronald Linco has any association with the disputed domain name registration. The WhoIs information provided by the Registrar shows that Jeff Emery is the registrant of the disputed domain name.
C. Identical or Confusingly Similar
The Complainant has provided evidence of its ownership the COINSILIUM trademark through its above−mentioned United Kingdom Trademark Registration, in use since 2014.
The disputed domain name consists of the Complainant's COINSILIUM mark in combination with the descriptive word "invest" and the generic Top-Level Domain ("gTLD") ".com".
This Panel finds that the disputed domain name is confusingly similar to the Complainant's COINSILIUM mark because: the disputed domain name incorporates the Complainant's mark as its first and dominant element; the addition of the word "invest" does not serve to distinguish the disputed domain name in any way, and in the context of the present Complaint, the gTLD ".com" may be ignored for the purposes of the comparison.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name because the disputed domain name is confusingly similar to, and fully incorporates, the Complainant's COINSILIUM mark in which the Complainant has an established goodwill. Furthermore on the evidence the disputed domain name is being actively used to cause confusion in the marketplace by being used as the address of a website which creates the false impression of some association with the Complainant.
It is well established that in circumstances such as in the present case, when a complainant makes a prima facie case that a respondent has no rights or legitimate interests in a domain name, the burden of production shifts to the respondent. The Respondent has failed to discharge the burden of production as it has refused to take part in the proceeding.
This Panel finds that the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
On the evidence submitted, this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith for the primary purpose of phishing.
It is most improbable that the disputed domain name, which consists of the Complainant's distinctive service mark in combination with the word "invest" and the gTLD "com", was chosen and registered for any reason other than to be used to wrongfully to create an association in the minds of Internet users with the Complainant's business, especially considering that the Complainant is engaged in the provision of financial services, and to divert Internet traffic for the purposes of phishing activity.
The Complainant has furnished evidence that the Respondent has wrongfully used or permitted the use the Complainant's trademark, logo and identity on the website to create the false impression that the Respondent's website is maintained by the Complainant.
This Panel agrees with the Complainant's submission, and finds on the evidence submitted, that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant and it is being used intentionally to attempt to attract for commercial gain Internet users to the Respondent's website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on the Respondent's web site or location.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and the Complainant has succeeded in the third and final element of the test in Paragraph 4(a) of the Policy.
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 <coinsiliuminvest.com> be transferred to the Complainant.
Date: November 1, 2017