WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GSB Gold Standard Banking Corporation AG v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / John Doe / Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd
Case No. D2021-1967
1. The Parties
The Complainant is GSB Gold Standard Banking Corporation AG, Germany, represented by Irle Moser Rechtsanwälte, Germany.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland /John Doe, United States / Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd, United States of America.
2. The Domain Names and Registrars
The disputed domain names <gsbipo.com> and <g999ipo.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The disputed domain names <gsbscam.com> and <g999scam.com> are registered with NameCheap, Inc.
In this decision, the disputed domain names are referred to individually as a “Disputed Domain Name” and collectively as the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On June 22, 2021, one of the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names <gsbscam.com> and <g999scam.com> which differed from the named Respondent and contact information in the Complaint. On June 23, 2021, the other registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names <gsbipo.com> and <g999ipo.com> which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 24, 2021, providing the registrant and contact information disclosed by the multiple Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 24, 2021. On June 29, 2021, the Center informed to the Complainant that its consolidation request would be considered by the Panel.
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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 5, 2021. 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 German company engaged in the blockchain services market and its products include white-labeled and customizable software solutions, trading modules, platforms, and signal/data streams. These products are provided to the financial sector. The Complainant also offers a cryptocurrency named “G999” and gold trading services.
The Complainant owns trademark registration No. DE 302019240907 for GOLD STANDARD BANKING registered on May 13, 2020.
The Disputed Domain Names were all registered on January 16, 2021 within seconds of each other.
At the time of this decision, the Disputed Domain Names do not resolve to any active websites. Evidence filed with the Complaint shows they previously linked to websites containing content about the Complainant. That content is discussed below.
5. Parties’ Contentions
The Complainant says it has common law trademark rights in the term GSB as an abbreviation of its name, and G999 as its product name. It says these terms are well known and associated with the Complainant in the global blockchain technology market.
It says the Disputed Domain Names are each confusingly similar with its trademarks as they each combine the trademark with a non-distinctive term (“scam” or “ipo” which is an abbreviation for “initial public offering”).
The Complainant says the content of the websites to which the Disputed Domain Name are linked is untrue and defamatory and designed to damage the Complainant. It says the Disputed Domain Names are registered and being used in bad faith.
The Complainant says it suspects a named individual of being behind the Respondents and provides details of German Court proceedings between the Complainant and that individual. It also refers to an earlier UDRP decision: GSB Gold Standard Banking Corporation AG and Josip Heit v. Domain Administrator d/b/a privacy.cloudns.net, Cloud DNS Ltd., WIPO Case No. D2021-1441 and says this is part of the same pattern of activity by the individual concerned.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Matters – no response
The Panel notes that no communication has been received from the Respondents. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrars, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Preliminary Matters – Respondent identity
The Panel also notes this is a case where some of the Respondents appear to be a privacy or proxy service.
The Panel in this case adopts the consensus approach of 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 is unable to conclusively determine the relationship between all of the respondents and the Panel considers that all of the named Respondents should be considered to be the Respondents in this decision.
Preliminary Matters – multiple Respondents
This is a case which is in formal terms brought against multiple Respondents (see above for full listing).
A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview 3.0 section 4.11.2 where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
With reference to the above, the Panel agrees with the Complainants that a number of factors point to the websites linked to the Disputed Domain Names as being under common control. Specifically the Disputed Domain Names were registered within seconds of each other, and all have a similar naming pattern; the contents of the websites to which they link contain non-coincidental similarities and are all hosted at the same IP address. Further similarities can be found in the data at disclosed by the Registrars as to the Respondents’ contact details. In the circumstances the Panel concludes consolidation would be fair and equitable; see Eli Lilly and Company v. Darren K. Headley et al., WIPO Case No. D2013-1303 and the cases therein cited.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademarks GSB and G999. The filed evidence establishes it has a substantial commercial reputation in these terms in the specialized field of blockchain technology. It does not have any registered trademarks but the Panel considers this matter adequately addressed given the facts of this case. WIPO Overview 3.0 addresses this issue as follows:
“1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark 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.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Panel also considers it relevant that the Respondents clearly thought it worthwhile to adopt a variation of the Complainant’s “GSB” and “G999” identifiers to attract visitors to their own websites. As the Panel noted in NEOVIA, Hi-Nutrients International Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Deniz Hus, WIPO Case No. D2019-0600: “The Respondent did not provide arguments to the contrary; rather, in the Panel’s view, the Respondent cannot dispute that, given it deliberately targeted the source identifier in an apparent fraud attempt. Such targeting of the Complainants is sufficient to establish limited trademark rights in the HI-NUTRIENTS trademark for the purposes of the Policy. See PEMF Supply, LLC v. Domain Administrator, See PrivacyGuardian.org / Gregory Lewis, American Healthcare Foundation, WIPO Case No. D2019-0235 (“in light of the use of the PEMF SUPPLY mark that was submitted in this proceeding, the targeting of Complainant by Respondent is sufficient to establish Complainant has limited unregistered trademark rights in the PEMF SUPPLY mark for the purposes of the Policy”). See also Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital pty WIPO Case No. D2019-0265 (“To that extent, Complainant has in fact used the domain name <gspring.com> as a source identifier for its services. One person who cannot dispute that fact is Respondent, who (as is discussed below) deliberately targeted that source identifier (<gspring.com>) to attempt to perpetrate a fraud via confusion. The Domain Name differs from the GSPRING mark only to the extent that the Domain Name replaces the ‘i’' with an ‘l’. The visual similarity between the ‘i’' and the ‘l’ – especially when the font is small – is obvious”).
In the present case given the evidence the Panel concludes the Complainant has established that the terms GSB and G999 have acquired the distinctiveness necessary to satisfy the requirements for an unregistered trademark for purposes of the Policy.
The Panel finds that each Disputed Domain Name is confusingly similar to one or other of these trademarks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is well established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also well established that the addition of a descriptive or geographic term to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189). Each of the Disputed Domain Names combines the G999 or GSB trademark with a descriptive term (“scam” or “ipo”)
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each Disputed Domain Name is confusingly similar to one of the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 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 at issue.
None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use GSB or G999 trademarks. The Complainant has prior rights in the GSB or G999 trademarks which precede the Respondents’ acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
Conceivably, had a response been filed, the Respondent might have suggested that the websites the Respondents linked to the Disputed Domain Names were each a bona fide criticism site and/or was an exercise of some form of free speech right. That seems to the Panel the only conceivable argument that could be advanced in support of a legitimate interest. The Panel has considered this, despite the fact of no Response having been filed, and had regard to the position set out in WIPO Overview 3.0 section 2.6, as follows:
“2.6 Does a criticism site support respondent rights or legitimate interests?
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as ‘fundraising’ to offset registration or hosting costs associated with the domain name and website)”.
In the present case the Panel considers the content of the websites in question to be manifestly untrue and offensive and unfair (see further below). Accordingly, the Panel does not consider that any legitimate interest arises in this respect.
The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Complainant has met its burden and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances the Panel agrees with the Complainant that the principle of factor (iii) applies as the Respondents are using the Disputed Domain Names to link to websites which publish material which is manifestly untrue and derogatory of the Complainant. By way of example the websites contain images of the Complainant’s chief executive which have been digitally manipulated to portray him with a swastika armband. The websites also contain serious allegations of fraudulent and criminal activity directed at the Complainant and its chief executive. There is no evidence before the Panel to suggest these allegations are anything but untrue. The Panel also notes that the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of good faith that they might have. The Panel infers that none exists. The Panel moreover notes that the multiple Disputed Domain Names (factor (ii)), under apparent common control, include several variations using the term “ipo” which is shorthand for “initial public offering” and that this indicates nothing of a critical nature, but instead shows an intent to confuse Internet users as to the origin of the Disputed Domain Names (factor (iv)).
Accordingly, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <gsbipo.com>, <gsbscam.com>, <g999ipo.com> and <g999scam.com> be transfered to the Complainant.
Nick J. Gardner
Date: August 19, 2021