WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A Medium Corporation v. Protection of Private Person, REG.RU Protection Service/Ivan Ivanov
Case No. D2018-2382
1. The Parties
The Complainant is A Medium Corporation of San Francisco, California, United States of America, represented by Crowell & Moring, LLP, United States of America.
The Respondent is Protection of Private Person, REG.RU Protection Service of Moscow, Russian Federation / Ivan Ivanov of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <rnediurn.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 23, 2018 the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On October 27, 2018 the Complainant requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings.
The Center verified that the 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 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 27, 2018. 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 an online publishing platform. The Complainant holds the United States federal trademark registration No. 5015382 for the MEDIUM trademark, for services relating to online publishing, social networking, and discussion of multimedia content, issued on August 9, 2016. The Complainant also owns the <medium.com> domain name.
The Respondent registered the Domain Name on August 9, 2018. The Domain Name used to direct to a website featuring the Complainant’s trademark, which offered an airdrop1 of Ethereum with a high rate of return. The offer required users to send a small amount of ETH2 to a linked address to identify participants’ addresses. Currently, the Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant claims that it is an online publishing platform featuring a dynamic and eclectic mix of professional and amateur news stories, thought pieces, commentaries, essays, art, and other media content. The Complainant contends that it holds the United States Patent and Trademark Office registration for the MEDIUM trademark. The Complainant alleges that the Domain Name is virtually identical to the Complainant’s famous MEDIUM trademark. The Complainant argues that the mere alteration of “medium” to “rnediurn” in the Domain Name does not lessen similarity between the Domain Name and the Complainant’s mark.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent is not commonly known by the name Medium, as a legal entity or otherwise. The Complainant claims that it has not licensed or otherwise authorized the Respondent’s use of its MEDIUM trademark. The Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because the Respondent is using the Domain Name for a website as a part of a fraud scheme. The Complainant claims that the Respondent is using the Domain Name to attract consumers to its own website to defraud Internet users and to cause them to believe they are participating in an airdrop of Ethereum sponsored by the Complainant, when the Respondent is usurping those funds.
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that the Respondent registered the Domain Name solely for intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the fake products and services offered on the Respondent’s website. The Complainant alleges that the landing page for the Domain Name is indistinguishable from that of the Complainant: it appears much like the Complainant’s website and offers an airdrop of Ethereum with a high rate of return if users provide Ethereum quickly. The Complainant claims that the landing page alleges that the airdrop is based on a community-wide “gift” to thank Complainant’s supporters. The Complainant further claims that the landing page also contains purported comments from individuals claiming to have received large amounts of Ethereum in exchange for sending .5-20 Ethereum. The Complainant contends that in the landing page, like the Domain Name itself, the Respondent falsely associates itself with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding because: (1) The Respondent is familiar with the English language, because the Domain Name resolves to a website containing English language content only; (2) Given that the English language is the sole language used by the Respondent regarding the Domain Name, proceeding in English regarding the Domain Name comports with “the spirit of fairness and justice” of the process.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names.”3
Here, the Respondent registered the Domain Name that is confusingly similar to the Complainant’s trademark, which used to resolve to a website containing an English language offer of airdrop of cryptocurrency. The alleged cryptocurrency offer that used to be displayed on the Respondent’s website, shows the Respondent’s excellent command of the English language. Further, that the Respondent did not object to the Complainant’s request for English to be the language of the proceeding and chose not to participate in the proceeding. Therefore it will not be unfair to the Respondent if the proceeding is conducted in English. Instead, making the Complaint translate the Complainant and supporting documents into Russian will impose undue financial burden on the Complainant and delay resolution of the dispute.
Based on the aforementioned circumstances, the Panel grants the Complainant’s request that English be the language of this proceeding.
6.2. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The evidence shows that the Complainant owns trademark registration for the MEDIUM trademark, so the standing requirement has been met.
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”4 The generic Top-Level domain (“gTLD”) “.com” is disregarded under the confusing similarity test.5 Here, the Respondent replaced the letter “m” with the letters “r” and “n” in the MEDIUM trademark and added the letter “r” to the mark to make the second-level domain visually indistinguishable from the Complainant’s trademark. The Domain Name is confusingly similar to the Complainant’s MEDIUM trademark because it consists of an intentional misspelling of the Complainant’s mark.
Thus, the Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case regarding the lack of rights or legitimate interests of the respondent.6 Once the complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8
Under UDRP paragraph 4(c), the following may demonstrate rights or legitimate interests in a domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
The evidence on file demonstrates the following:
- The Complainant has not authorized the Respondent to use the Complainant’s MEDIUM trademark.
- There is no evidence that the Respondent, Ivan Ivanov, is commonly known by the Domain Name.
- The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It is well-established that “the use of a domain name for illegal activity … can never confer rights or legitimate interests on a respondent”.9 The Respondent used the Domain Name to direct to a website, which appeared to be a part of a phishing scam designed to gain Internet user’s funds and/or unauthorized access to their cryptowallets. The Respondent masquerading as the Complainant posted on the website connected to the Domain Name information about a fake airdrop for Ethereum as a gift to its supports. The landing page for the Domain Name claimed that users will receive large amounts of ETH if they send 0.5-20 ETH to the payment address linked to the website, so the Respondent can identify users’ addresses.
The Panel therefore finds that the Complainant has made out a prima facie case regarding the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
Based on the totality of evidence, it is likely that the Respondent registered the Domain Name with the Complainant’s mark in mind. First, the Domain Name consists of an intentional misspelling of the Complainant’s trademark making it visually indistinguishable from the Complainant’s <medium.com> domain name. Second, the landing page for the Domain Name used to prominently display the Complainant’s trademark. Third, the Complainant’s mark appears to be known in the Russian Federation, the country of the Respondent’s residence. The Panel notes that there have been two previous cases involving Russian respondents who registered domain names confusingly similar to the Complainant’s MEDIUM trademark, which used to direct to landing pages offering airdrop of cryptocurrency10 .
The Panel also finds that the Respondent is using the Domain Name in bad faith. “It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud has been acquired and used in bad faith”.11 Here, the Respondent used the Domain Name for cryptocurrency scam. The Domain Name used to direct to a landing page displaying the Complainant’s trademark, where the Respondent posing as the Complainant tried to entice Internet users in sending it small amounts of cryptocurrency in exchange for offers to send large amounts of the same cryptocurrency. Such offers are often used to convince users to sign or verify a message to steal their private key.
Although the Domain Name currently does not resolve to any active website, it is well-established that passive holding of a domain name does not prevent finding of bad faith use12 where “any good faith use to which the [D]omain [N]ame may be put”13 is implausible. Taken the Respondent’s previous use of the Domain Name and that the Domain Name is confusingly similar to the Complainant’s mark, the Panel finds implausible any good faith use of the Domain Name.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been 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, <rnediurn.com>, be transferred to the Complainant.
Date: December 10, 2018
1 An airdrop for a cryptocurrency is a procedure of distributing tokens for free.
2 The Respondent uses the terms “Ethereum” and “ETH” to refer to Ether, the native cryptocurrency token on the Ethereum network.
3 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).