WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universa Investments L.P. v. c/o WHOIStrustee.com Limited, Registrant of universablockchain.com / Alexander Borodich, Universa Corporation Ltd. / Alexander Borodich
Case No. D2020-1567
1. The Parties
The Complainant is Universa Investments L.P., United States of America (“United States”), represented by Shartsis Friese LLP, United States.
The Respondent is c/o WHOIStrustee.com Limited, Registrant of universablockchain.com; United Kingdom / Alexander Borodich, Universa Corporation Ltd., Russian Federation / Alexander Borodich, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names <universablockchain.com> and <universa.com> (“the Disputed Domain Names”) are registered with 1API GmbH and GoDaddy Online Services Cayman Islands Ltd. respectively (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On June 16, 2020, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with the Disputed Domain Names. On June 17, 2020, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. After a request submitted by the Respondent, the due date for Response was extended until July 30, 2020. The Response was filed on July 29, 2020.
The Center appointed John Swinson as the sole panelist in this matter on August 6, 2020. 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 Universa Investments L.P, a company incorporated in the United States. According to the Complaint, the Complainant is an investment management firm that provides investment management services to customers across the world. The Complainant was founded in January 2007 and has become well known in the global financial services industry. The Complainant has been registered as an Investment Advisor with United States Securities and Exchange Commission since 2008 and National Futures Association since 2009.
The Complainant is the owner of registered trade mark number 5,713,136 for UNIVERSA, registered in the United States on April 2, 2019 (the “Trade Mark”). This application was filed in July 2018. The registration includes information that the Trade Mark was first used in commerce in 2007.
The Complaint relates to two disputed domain names, being <universa.com> and <universablockchain.com>. The disputed domain name <universa.com> is registered to Alexander Borodich. The disputed domain name <universablockchain.com> is registered to WHOIStrustee.com Limited, however, Mr. Borodich submits that he is the true owner of this domain name. The Panel accepts that Mr. Borodich owns both disputed domain names and a reference to “Respondent” in this decision refers to Mr. Borodich.
The Respondent is an individual located in Russia. The Respondent operates a business called Universa Blockchain and owns a number of domain names that include the term “universa”. The Respondent appears to offer blockchain services through these websites. The disputed domain name <universa.com> was registered on October 21, 2001 and the disputed domain name <universablockchain.com> was registered on October 9, 2017. The disputed domain name <universa.com> diverts to the disputed domain name <universablockchain.com>. This domain name resolves to a website which appears to offer blockchain services.
5. Parties’ Contentions
The Complainant makes the following submissions:
Identical or confusingly similar
The Complainant has registered trade mark rights in UNIVERSA. The Complainant was founded in January 2007 and has become well known for its global financial services, including specialized “tail risk” investment management services and services that attempt to provide protection for clients from changes in the value of various investment instruments. The Complainant registered the Trade Mark in 2019. The Disputed Domain Names are identical and identical in part to the Complainant’s Trade Mark.
Rights and legitimate interests
The Complainant secured a court order against the Respondent on February 26, 2019. This was in respect of the registration of the domain name <universa.io>, which was previously registered to the Respondent. The Court found that use of UNIVERSA or UNIVERSA formative trade marks by the Respondent was trade mark infringement.
The domain name <universa.io> previously resolved to the same website as the Disputed Domain Names.
The Respondent registered the Disputed Domain Names in an attempt to avoid the court order. The Respondent’s use of the Disputed Domain Names violates the court order and constitutes trade mark infringement. The court order specifically states that the Respondent cannot use the infringing marks or any other marks that are confusingly similar to the Complainant’s UNIVERSA marks.
The Respondent has no rights or legitimate interests in the Disputed Domain Names, just as the court order found that the Respondents had no rights or legitimate interests in the <universa.io> domain.
Registered and used in bad faith
The Complainant alleges that after it secured the court order finding trade mark infringement, the Respondent registered the Disputed Domain Names. The Respondent’s continued registration and use of the Disputed Domain Names violates the court order and constitutes trade mark infringement.
The Respondent makes the following submissions:
The disputed domain name <universa.com> was registered on October 21, 2001 and the disputed domain name <universablockchain.com> was registered on October 9, 2017.
The Disputed Domain Names have always been used by the Respondent for services covered under class 42, being technical or scientific services. The Disputed Domain Names have never been used to offer services in the United States.
The Respondent registered businesses associated with domains in 2016 to 2018 in Russia, Tunisia, United Arab Emirates, Liechtenstein, and Finland. The Respondent operates a business called Unviersa Blockchain.
By the time the Complainant was founded, the disputed domain name <universa.com> had already been registered for six years.
The Respondent applied to have trade marks registered in class 42 in the United States. However, the Complainant filed a notice of opposition and the Respondent withdrew the application. The Respondent does not have any business in the United States and that was the reason for the withdrawal.
By the date of registration of the Trade Mark by the Complainant, Universa Blockchain was properly registered as a business in Russia, Liechtenstein, European Union, and Tunisia.
The legal proceedings brought by the Complainant named the Respondent and Universa Corporation, Ltd as the defendants. The Respondent only became aware of the judgment in March 2019, when ICANN (which the Panel assumes is a mistaken reference by the Respondent to the relevant .IO registry) assigned control over the domain name <universa.io> to the Complainant. The Respondent was deprived of the right to defend themselves and present their case in the United States court.
The United States Court did not have jurisdiction to decide the <universa.io> decision and should have referred this to arbitration.
The notification of parties involving a non-United States person should have been done in accordance with International Treaties. The state courts in the United States do not have any jurisdiction beyond the borders of that state.
The Respondent has legitimate domain names ncluding <universablockchain.tn> and <universablockchain.eu>.
The Complainant and the Respondent are not competitors. The Respondent provides software solutions only and does not provide financial services in the United States. The Complainant does not perform any businesses relating to software or network solutions and is not a competitor of the Respondent.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and is being used in bad faith.
A. Procedural Issues
The Complaint has been filed against two Respondents and relates to two domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In this instance, the Respondent has confirmed that the Disputed Domain Names are owned by the same person. Further, both domain names relate to a trade mark owned by the Complainant. Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules.
On July 31, 2020, the Complainant submitted a supplemental filing. The Rules do not expressly provide for additional filings and generally, panels will only accept supplemental filings in “exceptional” circumstances.
The Panel has reviewed the supplemental filing, however the additional information provided is not material to the Panel’s decision in this case and does not cause the Panel to reach a different view than that which it reached on the basis of the original Complaint or Response. Further, this material could have been submitted in the original Complaint.
At the same time, as it will cause no prejudice to the Respondent, the Panel is prepared to admit the proposed supplemental filing to avoid a possible misunderstanding on the Complainant’s part as to (not) having a full opportunity to put forth its case.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name <universa.com> incorporates the Trade Mark with no additional terms.
The disputed domain name <universablockchain.com> incorporates the Trade Mark with the additional term “blockchain”. The addition of the term “blockchain” does not dispel the confusing similarity to the Trade Mark as the trade mark is clearly recognisable in this domain name.
The Panel finds that the disputed domain name <universa.com> is identical to the Trade Mark and the disputed domain name <universablockchain.com> is confusingly similar to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant relies on the judgment in the United States District Court for the Southern District of Florida (“Court”).
As set out in the Complaint, the Complainant secured a court order in the United States against the Respondent on February 26, 2019. The Complainant has provided evidence of the default judgment by the Court which set out that:
- The Respondent is permanently restrained from using the mark UNIVERSA.
- The Respondent cannot use the mark in connection with any website, domain name, media, or social media platform.
- The Respondent cannot represent themselves as being endorsed by Complainant.
- The Respondent cannot unfairly compete with Complainant or infringe any of the Complainant’s UNIVERSA marks.
- The <universa.io> domain name (previously owned by the Respondent) is transferred to the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names, and relies upon what appears to be a deemed admission by the Respondent in the court case that the Respondent has no rights or legitimate interests in the <universa.io> domain name. (It is unclear why the proceedings only involve the <universa.io> domain name and not the Disputed Domain Names.)
The Complainant says that the Respondent registered the Disputed Domain Names in an attempt to avoid this court order. The Panel cannot, on its face, accept this assertion (and the Complainant has not sought to imply that the Court Order should address the registration of the Disputed Domain Names). Both Disputed Domain Names were registered years prior to the court order and the Complainant has not provided evidence (for example, through a Historical WhoIs report) that the Respondent acquired these domain names at a date later than the registration date of the Disputed Domain Names.
In fact, the WhoIs report provided by the Complainant in the Complaint shows that the disputed domain name <universa.com> has a registration date in 2001. This report also shows that the WhoIs record was last updated in February 2018 (which is a year prior to the United States court order and five months prior to the Complainant filing its trademark application). Based on the Complainant’s own evidence, it does not appear to be the case that the Respondent registered the disputed domain name <universa.com> in an attempt to avoid the court order from February 2019.
The Complainant and Respondent dispute whether or not the Respondent was aware of the court proceedings. The Complainant says that the Complainant made a number of attempts to serve the Respondent (or the Respondent’s attorney) with a copy of the Summons and Complaint. The Respondent submits that the first time they heard about the court proceedings was when the <universa.io> domain name was transferred from them to the Complainant.
Whether or not the Respondent was aware of the court proceedings is largely irrelevant to the present dispute. The judgment in the Court is focused on trademark infringement (under the jurisdiction of the United States). This Panel is not bound by the decision in this case. Further, it is not the purpose of the Policy to implement or enforce a court’s judgment (see for example, Pret A Manger (Europe) Limited v. Prettogo LLC, WIPO Case No. D2018-0782).
The Panel finds that the Respondent does have rights or legitimate interests because:
- Based on the evidence before the Panel, the Respondent has genuinely used the Disputed Domain Names in connection with a legitimate business which offers blockchain services. The Respondent offers these services primarily in Russia, Tunisia, United Arab Emirates, Liechtenstein, and Finland. There is no evidence that the Respondent is offering these services to compete with or trade off the Complainant.
- The Respondent has registered business names for Universa Blockchain in a number of countries, and therefore the Respondent could arguably be commonly known by the Disputed Domain Name. Further, the Respondent registered these business names prior to the Complainant acquiring trade mark rights.
The Complainant relies on the judgment (which was a default judgment with no reasons given) to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The evidence before this Panel is different to the evidence before the Court. Moreover, there is no evidence before this Panel that the Respondent is targeting its conduct at customers of the Complainant, especially in the United States.
Domain names are registered on a first-come, first-served basis. There may be two entities in different countries who both use the same trade marks or have the same trading name. There is no justification under the Policy to transfer a domain name from the first-in-time registrant who has rights to another entity who may also have rights.
The Panel finds that the Complainant has not established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
Given the Panels finding under element two, it is not strictly necessary for the Panel to consider the third element. However, for completeness the Panel sets out the reasons that the Complainant has failed to establish registration and use in bad faith.
To succeed in a complaint under the Policy, it is well-established that under the third element of the Policy, the complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
Where a respondent registers a domain name before the complainant’s trade mark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent (see WIPO Overview 3.0, section 3.8.1). No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).
In this instance the disputed domain name <universa.com> was registered on October 21, 2001 and the disputed domain name <universablockchain.com> was registered on October 9, 2017.
According to the Complaint, the Complainant first used the Trade Mark in its business in 2007, and obtained registered rights in the Trade Mark in 2019. At the time the universa.com domain name was registered in 2001, the Complainant had not yet commenced operations of its business, nor did it have any rights in the Trade Mark. At the time, the disputed domain name <universablockchain.com> was registered in 2017, the Complainant had commenced operating its business but had not yet filed for trade mark protection and did not have any trade mark registrations.
In the Supplemental Filing, the Complainant states that the Complainant had valid common law rights when it began using the UNIVERSA mark in commerce in 2007. Apart from this assertion, the Complainant has not provided any evidence of its common law trade mark rights accruing from 2007.
To establish unregistered or common law trade mark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services (see RoofPro, LLC v. Privacydotlink Customer 774656 / Blue Nova Inc., WIPO Case No. D2018-0883 and section 1.3 of the WIPO Overview 3.0. In this instance, the Complainant has not provided any evidence to support any of these factors.
For example, the Complainant has not provided any sales figures, marketing material, figures relating to number of customers or any evidence (for example, media report or articles) to show that they were well known and as such would have acquired common law trade mark rights in UNIVERSA before receiving registered trade mark rights in 2019.
As the Disputed Domain Names were both registered before 2018 (when the application for the Trade Mark was filed), with one of the Disputed Domain Names registered in 2001 before the Complainant even existed, the Panel cannot accept the Complainant’s submission based on the evidence before the Panel that the Respondent registered the Disputed Domain Names with the Complainant in mind.
As stated by the panel in Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335:
“In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the [trade mark] at the time of registration. In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith.”
The same reasoning applies here. The Complainant has not provided any evidence, nor has it even attempted to make any argument, as to why the Respondent knew or should have known of the Complainant or its future business operations at the time it registered the Disputed Domain Names in 2001 or 2017. The Complainant’s case is based on “information and belief” but without evidence or reasons. The Complaint does not set out any relevant information or belief that the Complainant relies upon to make assertions “on information and belief”. The Complainant’s conduct could be considered to be an attempt at reverse domain name hijacking, but the Panel does not reach that finding here because it is possible that the Complainant misunderstood the effect or scope of the Court Order and pleadings under the Policy (as different from courts where “information and belief” can be asserted prior to discovery).
In the Supplemental Filing, the Complainant makes a comment that the Respondent was not the original registrant of the domain name. However, the Complainant provides no evidence that the Respondent acquired the Disputed Domain Names at a later date than the original registration date. This is especially confusing to the Panel as, if true, this would be a critical aspect of the Complainant’s case.
Based on the material before the Panel, there is no basis on which the Panel can find that the Respondent registered the Disputed Domain Name in bad faith.
There is also no evidence of bad faith use by the Respondent.
In light of the above, the Panel finds that the Complainant has not established the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: August 20, 2020