WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ternio, LLC v. Domains by Proxy, LLC / Sedo GmbH
Case No. D2020-2215
1. The Parties
The Complainant is Ternio, LLC, United States of America (“United States”), represented by Zlatkin Wong LLP, United States.
The named Respondent is Domains by Proxy, LLC, United States / Sedo GmbH, Germany.1
2. The Domain Name and Registrar
The disputed domain name <blockcard.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 25, 2020, 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 September 4, 2020 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 7, 2020.
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, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. On October 6, 2020, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to October 16, 2020. The Response was filed with the Center on October 16, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 29, 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 a limited liability company incorporated in the United States which is in business in the crypto-currency2 and physical payment card industry.
The Complainant is the owner of United States trademark number 5,711,077 for the words BLOCK CARD (the “BLOCK CARD trademark”). The application for this trademark was filed on January 15, 2018 and it was registered on March 26, 2019.
The Disputed Domain Name was originally registered on December 12, 2010. See below as to the date the Respondent acquired it.
The Disputed Domain Name currently resolves to a “parking page” website offering links to various goods and services, typically relating to credit cards or other financial services. There is no evidence of any of these links resolving to pages or products dealing with cryptocurrency or blockchain technology.
5. Parties’ Contentions
The Complainant says that since January 1, 2018, it has continuously used the BLOCK CARD trademark to offer a VISA card and banking service.
The Complainant submits that the Disputed Domain Name incorporates its BLOCK CARD trademark in its entirety and is identical or confusingly similar to that trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that it has never authorized the Respondent to use its BLOCK CARD trademark, that the Respondent has not been commonly known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant says that use of the Disputed Domain Name for the parking page referred to above does not amount to bona fide commercial use.
The Complainant submits that the Disputed Domain Name was registered and has been used in bad faith. While acknowledging that the Disputed Domain Name was first registered in 2010, the Complainant alleges that the Respondent acquired the Disputed Domain Name on January 16, 2018 which was the day after the Complainant filed its application to register “BLOCK CARD” with the United States Patent and Trademark Office on January 15, 2018. It says it had previously published a “white paper” in December 2017 which contained details of its plans. It says that its BLOCK CARD trademark is well known and provides what it describes as “copies of exemplary promotions run by Complainant using the [BLOCK CARD trademark]”.
The Complainant contends that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling it, and has in furtherance of that purpose used the Disputed Domain Name misleadingly to attract Internet users who are looking for the Complainant’s website. The Complainant submits that the Respondent knew of the Complainant’s rights when it registered the Disputed Domain Name having done so opportunistically when it became aware of the Complainant’s trademark application.
The Complainant requests the transfer of the Disputed Domain Name.
The Respondent Simply Wireless, Inc. says it is an entity incorporated in the Commonwealth of Virginia in the United States of America. It says it has existed for more than twenty years providing various forms of technology services. The Respondent accepts the Disputed Domain Name is identical to the BLOCK CARD trademark (but takes issue with other matters the Complaint has relied upon in relation to this element).
The Respondent says “This is simply a circumstance of two unknowns in the industry operating without knowledge of one another with similar business ideas and similar names for those ideas”.
It says that it independently developed the idea for a gift card which could be preloaded with blockchain based crypto-currency value and that the name “block card” was an obvious choice for that product. It says it devised that idea in late 2017 and places in evidence material it says confirms this is the case. This evidence is discussed below. It says the Complaint is wrong to suggest that the Respondent’s purchase date was January 16, 2018 and places in evidence material (discussed below) it says confirms the true position. The Respondent says it purchased the Disputed Domain Name through Sedo on January 11, 2018, and it then paid the Registrar on January 13, 2018 in order to complete the transfer.
It also points out that the Complainant’s own evidence in the form of the WhoIs data for the Disputed Domain Name shows an entry “updated on 2018-01-14”. It says it had never heard of the Complainant or its BLOCK CARD trademark prior to the present Complaint. It also disputes the Complainant’s case as to the usage and fame of the BLOCK CARD trademark. It says it has received a series of increasing offers to purchase the Disputed Domain Name made via a broker which it infers were from the Complainant. It also disputes the Complainant can have published any “white paper” describing anything in December 2017 as it was not incorporated until January 2018.
The Respondent submits that, in any event, it has rights or legitimate interests in the Disputed Domain Name and has not used it in bad faith. It says before any notice of this dispute, it used, or demonstrably prepared to use, the Disputed Domain Name domain name in connection with a bona fide offering of goods or services and that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Respondent say that the Complaint has sought to mislead the Panel, and knew or should have known that the Respondent acquired the Disputed Domain Name prior to the Complainant filing its BLOCK CARD trademark application. It requests a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
The Panel notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc.”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel would normally consider the substantive Respondent to be the other named Respondent, i.e. Sedo GmbH. Sedo is a well-known market place for trading in domain names and it seems clear that in this case it holds the Disputed Domain Name on behalf of its underlying customer. That customer is at present Simply Wireless Inc. who has filed the Response in this case. The Panel will treat Simply Wireless Inc. as the Respondent and references to the Respondent are to that company, unless otherwise stated.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the BLOCK CARD trademark. The Disputed Domain Name is effectively identical to this trademark and the Panel therefore finds that the first element under paragraph 4(a) is satisfied.
B. Rights or Legitimate Interests
The Panel regards as entirely credible the evidence as to how and why the Respondent independently arrived at the name “Block Card” for a proposed business venture based on a crypto-currency loaded prepayment card based on blockchain technology. The evidence filed by the Respondent makes clear that the Respondent independently devised such a plan and it chose the name “Block Card” for that project. It did so prior to the Complainant filing its application for the BLOCK CARD trademark. That evidence includes the following:
1. An internal email exchange dated December 28, 2017 discussing the “Block Card working document”. That includes the statement “Should I reserve blockcard.com? $2.99? why not”;
2. An email exchange dated January 4, 2018 with law firm Wilson Sonsini, Goodrich & Rosati seeking to agree a retainer for that firm to provide regulatory advice as to amongst other things “Block Card Gift Cards”;
3. An email exchange dated January 8, 2018 confirming wire payment instructions for USD 6,200 to purchase the Disputed Domain Name;
4. Confirmation dated January 13, 2018 from the Registrar of the Respondent’s purchase of the Disputed Domain Name.
That evidence needs to be weighed against the Complainant’s evidence supporting its case that the Respondent acquired the Disputed Domain Name on January 15, 2018. The Complainant relies upon a report which appears to have been obtained from a website entitled “TheDomains.com” and which is dated January 16, 2018 and lists “Sedo weekly sales”. It includes in a long list the Disputed Domain Name as having sold for USD 6,200. The difficulty with this evidence is that if it is (as it states) “weekly sales” it presumably includes all sales in the week leading up to January 16, 2018 (or possibly an earlier date e.g. January 15, 2018 – the exact period the report covers is not stated) and so does not necessarily confirm a date of January 15, 2018. It is equally consistent with the Respondent’s account of the timing. The only other relevant date in the Complainant’s evidence (which it has not mentioned or relied upon) is the date shown in the WhoIs data which contains a reference “updated on 2018-01-14”. Again, this does not support the Complainant’s case. Taking this evidence as a whole the Panel concludes that (i) the Respondent purchased the Disputed Domain Name before the Complainant filed its BLOCK CARD trademark application; and (ii) it did so having independently decided to use the words “Block Card” for a commercial venture of its own.
It follows the Panel does not accept the Complainant’s case that the Respondent’s acquisition of the Disputed Domain Name was an opportunistic plan based on the Complainant’s trade mark application. It also follows the Respondent has established a legitimate interest and the Complaint must fail.
C. Registered and Used in Bad Faith
In the circumstances, for the reasons discussed above the Panel finds that the Respondent cannot have registered the Disputed Domain Name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of that trademark, and cannot therefore have registered it in bad faith for the purposes of the Policy (see e.g., WIPO Overview 3.0, section 3.8). Since the requirement under paragraph 4(a)(iii) is conjunctive, i.e. the disputed domain name must have been both registered and used in bad faith, the Complaint must therefore fail for this reason as well.
The Panel will however also address the Complainant’s arguments as to use. The Disputed Domain Name has been linked to an automatically generated parking page containing “pay per click” (“PPC”) links. The Respondent says it has done this because its “Block Card” project is on hold, having encountered various commercial and regulatory issues. It says using the Disputed Domain Name this way enables it to earn some revenue from it. The Panel sees no reason to dispute the Respondent’s account.
WIPO Overview 3.0 states at section 2.9 as follows “Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. The Panel considers this principle is equally applicable to bad faith use and is applicable in the present case. The fact that the dictionary word “card” tends to generate links to credit card related websites is not in itself indicative of bad faith. See Burger King Corporation v. Burger King S.R.L., WIPO Case No. D2008-0012, “The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267)”. In the present case it is clear to the Panel the Respondent did not choose the Disputed Domain Name because of anything to do with the Complainant and has only used it in connection with the ordinary meaning of the words it comprises. That is good faith use.
7. Reverse Domain Name Hijacking
Under paragraph 15(e) of the Rules:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As set out in WIPO Overview 3.0 section 4.16, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”.
The Panel considers that the Complainant has materially overstated its case, and failed to consider fully the consequences of the relevant facts. The Panel appreciates that the true owner of the Disputed Domain Name was obscured behind a privacy service and Sedo then being the registrant of record. However there was no evidence of the Disputed Domain Name ever having been used to target the Complainant – it ought to have been clear to the Complainant that the PPC links in the parking page in question were an unsurprising result of the dictionary words which make up the Disputed Domain Name. Once that is appreciated the Complainant’s case comes down to what it says was the non-coincidental case that the Respondent acquired the Disputed Domain Name on the day after the Complainant filed a trademark application. But the Complaint’s case in this respect relied upon a report which it must have known did not unambiguously confirm this was the case (as it covered a week which involved dates both before and after the date the trademark application was filed). The Panel cannot believe that the Complainant did not also check the WhoIs data it had filed in its evidence to see if it removed the ambiguity. It does not but instead suggests the Respondent acquired the Disputed Domain Name before the trademark application was filed. The Complaint did not draw this to the Panel’s attention. The Panel infers this omission was more likely than not a conscious decision.
The Complainant has also overstated its case in other respects. It has filed voluminous material which it says show the fame of its BLOCK CARD trademark. This material comprises what it calls “copies of exemplary promotions run by Complainant using the BLOCK CARD trademark”. That is not an accurate description of the material in question. It comprises over 400 pages of corporate publicity, press articles, interviews and the like. The Panel accepts that within this material there is the occasional reference to the Complainant’s Block Card product but such references are relatively few – in the main the material is just general promotion – as for example in the first article in the material which is entitled “It’s a Misconception that Blockchain Isn’t Scaleable for Digital: Q&A with Ian Kane, Ternio” which is several pages long and does not appear to contain a single reference to Block Card. Most if not all of this material also postdates the date the Respondent acquired the Disputed Domain Name and hence is of no relevance to the Respondent’s likely knowledge when it acquired the Disputed Domain Name.
The Complainant has also relied upon what its says was a “whitepaper” it published in December 2017 setting out its plans. It has not provided a copy of this paper and as the Respondent correctly points out the Complainant was not formed until January 2018 so cannot have published anything in December 2017. The Panel is left with the impression this was a further attempt by the Complainant to overstate its case.
There is also some evidence that suggest the Complainant may have made anonymous attempts to purchase the Disputed Domain Name. However the Panel regards the record here as unclear and places no weight on this issue.
Overall the Panel has reached the conclusion that the Complaint deliberately overstates the Complainant’s case in a way which could well have misled the Panel, particularly if no response had been filed. The Panel considers that merits a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Date: November 16, 2020
1 Note however that a Response has been filed by a company called Simply Wireless, Inc., United States, represented by Cameron/McEvoy, PLLC, United States, stating it is the owner of the domain name in issue, whereas Sedo GmbH provides parking and broker services for domain owners. Reference to the Respondent in this decision are to Simply Wireless Inc. unless otherwise stated.
2 In general terms crypto-currencies are based upon what is known as blockchain technology. The Panel does not think it useful to attempt to explain the detail of how crypto-currencies operate or how the underlying blockchain technology works. Ample material exists in the public domain if required.