WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coinify ApS v. WhoisGuard Protected / Iftekar Shimon
Case No. D2017-2012
1. The Parties
The Complainant is Coinify ApS of Herlev, Denmark, represented by Løje, Arnesen & Meedom LLP, Denmark.
The Respondent is WhoisGuard Protected of Panama / Iftekar Shimon of Dhaka, Bangladesh.1
2. The Domain Name and Registrar
The disputed domain name <coinify.pro> (“Disputed 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 October 17, 2017 naming WhoisGuard Protected as the Respondent. On October 17, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2017 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 October 31, 2017.
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 November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. On November 6, 2017, the Center received email communications from a Mr. Gibson indicating that, Coinify Ltd, the company mentioned by the website at the Disputed Domain Name had been registered using his address and a personal name similar to Mr. Gibson’s without his consent, and that he believed he had been the victim of identity theft. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 23, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 5, 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.
4. Factual Background
The Complainant has been operating a cryptocurrency trading platform and payments system available at the domain name <coinify.com> since 2014. The Complainant owns the trade mark COINIFY (“Coinify Mark”) registered in the European Union on October 29, 2014.
The Disputed Domain Name was registered on June 13, 2017 and used to resolve to a website that purports to provide Bitcoin mining and investment services.
5. Parties’ Contentions
The Complainant's contentions can be summarized as follows:
(a) The Complainant owns rights in COINIFY in the European Union, registered on October 29, 2014, for services that include financial services, financial payment services and credit leasing. The Complainant has owned the domain name <coinify.com> since 2009, which resolves to the Complainant’s official website.
(b) The Disputed Domain Name, which was registered on June 13, 2017 by WhoisGuard Protected, resolves to a website (“Website”) purporting to offer Bitcoin mining and investment services while displaying the Coinify Mark. The Complainant carried out an investigation into Coinify Limited (“Listed Company”), the company listed on the “about me” page of the Website through an agent. Because the agent found that the Disputed Domain Name was registered through a privacy protect service out of Panama while the Website is hosted from Ecuador, and because the Help Center number listed on the Website immediately hung up when the agent asked to speak with the company’s director, Complainant believes the Website is trying to perpetrate a scam. The Complainant’s other attempts to communicate with the Listed Company through its registered office address or the home address of the listed director were not successful.2
(c) The most distinguishing part of the Disputed Domain Name is “coinify”, which is confusingly similar to the Coinify Mark. The use of the word “pro” in the Disputed Domain Name does nothing to distinguish the Disputed Domain Name from the Complainant's Coinify Mark.
(d) The Respondent has no legitimate rights or interests in the Disputed Domain Name. The Complainant has been operating a successful Bitcoin and other digital currency related businesses across Europe since 2014. The Respondent is not affiliated with the Complainant and has been using the Disputed Domain Name to intentionally mislead Internet users by offering similar services, or perpetrating a scam, while displaying the Complainant’s Coinify Mark on the Website. Given the Complainant’s success in the Bitcoin related financial success prior to the registration of the Disputed Domain Name and the Respondent’s attempts to copy the Complainant’s characteristics on the Website, the Respondent must have been aware of the Complainant and its Coinify Mark when the Respondent registered the Disputed Domain Name.
(e) The Respondent registered and is using the Disputed Domain Name in bad faith. The Disputed Domain Name was first registered through a privacy protect service out of Panama even though the Listed Company is a British private company. The Website offers the same services as the Complainant while also displaying the Complainant’s Coinify Mark. It has been impossible to get in contact with the Listed Company even though its office address is in the United Kingdom. The registrant of the Disputed Domain Name also proved to be Iftekar Shimon located in Bangladesh which appears to have stolen the identity of a UK national to incorporate a company in the UK.
The Respondent did not file a formal Response.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the Coinify Mark, based on its registrations in the European Union with a registration date of October 29, 2014.
The Disputed Domain Name incorporates the word “coinify” which is confusingly similar to the Complainant's Coinify Mark. The word “pro”, as used in the Disputed Domain Name, is a generic term. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that “coinify” is the distinctive component of the Disputed Domain Name, and the addition of “pro” does nothing to distinguish it from the Complainant’s trade mark.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the Coinify Mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to provide evidence demonstrating that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or names corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or names corresponding to them. The Disputed Domain Name currently resolves to a website that allegedly offers investment and trading-related services.
Even if the Website was offering genuine services, the Panel finds that such use cannot amount to a bona fide offering of services since the Respondent is using the Website to offer services in the same industry as the Complainant, and the Disputed Domain Name is confusingly similar to the Complainant’s Coinify Mark. As held by the panel in Microchip Technology, Inc. v. Milos Krejcik and EDI Corporation, d/b/a Aprilog.com, WIPO Case No. D2001-0337, although the respondent had been offering goods for sale prior to any notice of dispute, as the respondent used the domain name to resolve to a website where users were likely to be confused as to whether the site was affiliated with the complainant, the respondent could not be bona fide and did not have legitimate rights or interest in the domain name.
Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant’s Coinify Mark, the Panel finds that the Respondent has been using the Disputed Domain Name with the intent of misleadingly diverting consumers to the Website in order to make a commercial gain by offering services (which may or may not be genuine) that directly compete with the Complainant. Such use cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is likely to have known of the Complainant’s Coinify Mark at the time he registered the Disputed Domain Name, and registered and used it in bad faith, based on the following:
(a) the Respondent acquired the Disputed Domain Name on June 13, 2017, three years after the Complainant first began using its Coinify Mark in relation to its business;
(b) the Respondent has been using the Disputed Domain Name to offer services that compete with the Complainant’s business; and
(c) the Disputed Domain Name is confusingly similar to the Complainant’s Coinify Mark.
The above cannot be mere coincidence given the fact that the Respondent offers a competing financial service relating to Bitcoins and that the Respondent’s Website displays the Complainant’s Coinify Mark. The Panel believes that the Respondent registered and used the Disputed Domain Name with the intent of trading on the reputation of the Complainant’s Coinify Mark to attract Internet users to the Website, by creating a likelihood of confusion with the Complainant’s Coinify Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent Website, for commercial gain.
Further, the Respondent initially registered the Disputed Domain Name through a privacy protect service and the company listed on the website appears to have been fraudulently established using a stolen identity. This is textbook evidence of bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <coinify.pro>, be transferred to the Complainant.
Date: December 19, 2017
1 WhoisGuard Protected was listed as the Registrant of the Disputed Domain Name as recently as October 2, 2017 according to Annex 1 of the Complaint. Iftekar Shimon was the listed Registrant of the Disputed Domain Name as of October 27, 2017 according to Annex 16 of the Complaint.
2 A Mr. Gibson did respond to the Center’s notice sent to the home address of the director of the Listed Company. Mr. Gibson claims in his response to the Center that his identify was stolen and the identity thief used it to fraudulently establish a UK company with Companies House.>