WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celo Foundation v. Ben Phillips Phillips
Case No. D2020-2292
1. The Parties
Complainant is Celo Foundation, United States of America (“United States”), represented by Butzel Long, United States.
Respondent is Ben Phillips Phillips, United States.
2. The Domain Names and Registrars
The disputed domain names <buycelogold.online> is registered with Hostinger, UAB and <officialcelo.org> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2020. On September 3, 2020, the Center transmitted by emails to the Registrars requests for registrar verification in connection with the disputed domain names. On September 4, 2020, the Registrars transmitted by emails to the Center their verification responses confirming that 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 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. Respondent sent various informal email communications to the Center between September 22, 2020, and September 26, 2020. Respondent did not submit a formal response. Accordingly, the Center notified the Parties the Commencement of Panel Appointment process on November 2, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 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
Complainant, Celo Foundation, is a non-profit organization based in the United States whose mission is to bring financial inclusion to billions of people around the world by developing an open-source financial ecosystem through the use of stablecoin technology. Complainant has developed and promotes its own blockchain, stablecoin, and financial tools and services under the name and mark CELO. Complainant owns a trademark registration in the United States for the mark CELO in connection with its services (No. 6130786), which was filed on April 13, 2018, and issued to registration on August 18, 2020 (claiming first use in commerce in September 2018). Complainant also owns the domain name <celo.org> which it has used since 2018 to provide information regarding its mission and CELO services and platform.
Respondent is an individual based in California. Respondent registered the disputed domain names on March 14 and 15, 2020. The disputed domain names have been used with websites promoting the presale of Celo Gold with Bitcoin, Ethereum, Bitcoin cash or other means. The disputed domain names do not currently resolve to an active web page or website.
5. Parties’ Contentions
Complainant asserts that it owns rights in the CELO mark by virtue of its United States trademark registration and on account of its common law use of CELO since 2018 in connection with Complainant’s activities and services. Complainant further asserts that it is well known in its industry under the name and mark CELO.
Complainant contends that the disputed domain names are identical or confusingly similar as they each contain the CELO mark in its entirety.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) is not commonly known by the disputed domain names, and (iii) has not made a bona fide offering of goods and services with the disputed domain names. In that regard, Complainant notes that Respondent was using the disputed domain names in connection with websites that offered large amounts of Complainant’s CELO Gold cryptocurrency for sale through alleged auctions, when in fact CELO Gold was not in fact released by Complainant and available for purchase.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain names in bad faith to attract Internet users to Respondent’s websites at the disputed domain names in order to make alleged sales of a cryptocurrency controlled by Complainant and which were no in fact available for sale at that time.
Respondent did not reply to Complainant’s contentions. Respondent, however, did send some informal emails to the Center concerning the matter and in which Respondent simply stated in response to the Complaint: “These domain names contain nothing infringing. Why are you complaining?”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and,
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Seesection 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has submitted its United States trademark registration for the CELO mark along with evidence that it owns and uses the CELO mark in connection with its blockchain and stablecoin products and related services. In particular, Complainant has provided evidence showing that it has used its CELO name and mark since 2018 and that it has, since that time, received much third party recognition for its activities, CELO platform and services, and CELO cryptocurrency.
With Complainant’s rights in the CELO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.org” or “.online”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s CELO mark as they both fully incorporate the CELO mark in its entirety with non-distinguishing descriptive words such as “official,” “buy,” and “gold.” The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s CELO mark and in showing that the disputed domain names are confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, and Respondent’s failure to file a formal response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names. Since registering the disputed domain names, which was on dates after Complainant had filed an application to register the CELO mark in the United States and well after Complainant had used and secured rights in the CELO mark in connection with its products and services, Respondent used the disputed domain names to attract web users to its websites for purposes of offering large amounts of Complainant’s CELO Gold cryptocurrency for sale. Respondent who is not affiliated with Complainant and is not commonly known by the CELO name and mark, posted websites at the disputed domain names that when viewed in combination with the disputed domain names suggested that they were official websites or somehow connected to Complainant. The text on the websites provided information regarding CELO Gold in such a way that it made it appear that Respondent’s website were connected to Complainant. The websites, for example, included statements such as “our mission is to build a financial system that creates the conditions of prosperity – for everyone” and “Celo is supported by 80 backers” followed by a list of various venture funds, academics and other backers. In total, the disputed domain names and associated websites look to have been part of a scheme by Respondent to make it appear that Complainant was involved or backing the sales of CELO Gold through Respondent’s websites, when such was not the case. Simply put, such use of the disputed domain names does not constitute a legitimate use and is opportunistic, at best.
Given that Complainant has established with sufficient evidence that it owns rights in the CELO mark, and given Respondent’s above noted actions and failure to file a formal response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
In view of Respondent’s actions, and failure to appear in this proceeding beyond informal emails claiming no infringement, it is easy to infer that Respondent’s registration and use of the disputed domain names, which fully incorporate Complainant’s CELO mark with descriptive terms (such as “official”) that are likely to be perceived by consumers as suggesting a connection with Complainant, has been done opportunistically and in bad faith for purposes of attracting web users to Respondent’s websites to offer alleged sales of Complainant’s CELO Gold cryptocurrency. There can be no doubt that Respondent was fully aware of Complainant and its CELO mark given that Respondent’s websites at the disputed domain names were offering sales of the very product developed by Complainant under its CELO. Given that Respondent registered the disputed domain names well after Complainant had established rights in the CELO mark and did so for profit, it appears more likely than not that Respondent’s actions were in bad faith and knowingly meant to take advantage of the goodwill associated with Complainant’s CELO mark.
The Panel thus finds that Complainant succeeds under this element 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 names, <buycelogold.online> and <officialcelo.org>, be transferred to Complainant.
Date: November 20, 2020