WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

block.one v. Lee Jun

Case No. D2021-3100

1. The Parties

The Complainant is block.one, Cayman Islands, United Kingdom, represented by McDermott Will & Emery LLP, United States of America (“U.S.”).

The Respondent is Lee Jun, Republic of Korea (“Korea”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <voiceits.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, 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 September 30, 2021, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On October 4, 2021, the Complainant requested for English to be the language of the proceeding. On the same day, the Respondent requested for Korean to be the language of the proceeding.

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 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Response was attempted to be filed with the Center on November 23, 2021, but due to file size, was filed on December 10, 2021.

The Center appointed Moonchul Chang as the sole panelist in this matter on December 29, 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, Block.one, creates platforms and tools that enable the building of blockchain or NFT supported and decentralized business, applications and collectives. The Complainant previously provided a blockchain-based social media networking platform of VOICE 1.0 and is currently using the platform as a social network and marketplace for NFT’s or non-fungible token.

The Complaint holds trademark applications in various countries for the trademarks containing the term VOICE. These trade applications include U.S. Trademark Application No. 88461547 for VOICE with a filling date of June 6, 2019, U.S. Trademark Application No. 88461543 for VOICE (stylized) with a filling date of June 6, 2019, and U.S. Trademark Application No.88757919 for VOICE IT with a filing date of January 14, 2020. In addition, the Complainant also holds trademark applications for the “solid heptahedron” logo mark logo, including U.S. Trademark Application No. 88478860 for logo with a filing date of June 18, 2019. The Complainant is also the owner of the trademark EOS in several jurisdictions including the U.S. Trademark Registration No. 88252885 for EOS, filed on January 7, 2019 and registered on August 24, 2021.

The Complainant also provides numerous third-party articles (e.g., in addition to its own many press releases, from: SiliconANGLE, The Block, Bywire, reddit, CNBC, Coindesk, MoneyMorning) dating from June 2019 onwards, discussing the Complainant and its activities.

According to the publicly available WhoIs information, the disputed domain name <voiceits.com> was registered on January 1, 2021.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The Complainant began to use the VOICE mark in connection with its social networking platform after it announced the launch of the VOICE social platform in June 2019. The goal of the VOICE platform is to be a more transparent social media platform. Since 2019, the Complainant has extensively used the VOICE trademark in connection with its social platforms. In July 2020, the VOICE social media app was officially launched for the public. On April 16, 2021, the Complainant officially announced the launch of its VOICE 2.0 platform, where users can create digital art and buy and sell such works as NFT digital artifacts.

The Complainant has developed substantial goodwill in the trademarks VOICE and EOS, as well as its official domain name <voice.com>. In addition, the Complainant is the owner of a “solid heptahedron”

logo Trademark appearing on the website at the disputed domain name and has used it since April 2019.

(2) The disputed domain name is identical or confusingly similar to the Complainant’s trademark because it contains the Complainant’s VOICE mark in whole combined with the term “its”. The addition of the generic term “its” to the VOICE trademark does not reduce confusingly similarity with the Complainant’s VOICE mark in the disputed domain name. The disputed domain name was registered on January 1, 2021 more than one year after the Complainant’s first use of the VOICE mark.

(3) The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s VOICE trademark or any domain names incorporating the VOICE trademark. The Respondent is not commonly known by the disputed domain name. The Respondent deliberately chose a domain name that is essentially identical to the Complainant’s VOICE and EOS marks and appears to be attempting to seem associated or affiliated with the Complainant. Further, the Respondent is not making a legitimate noncommercial fair use of the disputed domain name because the Respondent is posing as and attempting to pass itself off as the Complainant by imitating the Complainant’s copyrighted website content of the Complaint’s original VOICE 1.0 platform including EOS mark without the consent of the Complainant.

The Respondent has no legitimate interest in the disputed domain name, in view of the Complainant’s prior statutory and common law rights in the VOICE and EOS trademarks.

(4) The Respondent registered and is using the disputed domain name in bad faith. Firstly, given the Complainant’s worldwide reputation and the presence of its VOICE and EOS marks on the Internet, the Respondent was or should have been aware of the VOICE and EOS marks long prior to registering the disputed domain name. Secondly, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s VOICE and EOS trademarks as to the source, sponsorship, affiliation or endorsement of the website. This also appears designed to disrupt the business of a competitor. Thirdly, it is most likely that the Respondent did have actual notice of the Complainant’s marks and its domain name <voice.com> because of its copying of the Complainant’s VOICE 1.0 social networking platform and the Respondent’s use and display of the Complainant’s VOICE, EOS and “solid heptahedron” trademarks throughout the website. Given the well-known status of the Complainant’s VOICE and EOS marks and the Complainant’s registration and use of the domain name <voice.com>, there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks.

B. Respondent

The Respondent contends that:

(1) Since the Complainant’s VOICE 1.0 social networking service was unsuccessful to shutdown, the Complainant newly launched NFT platform service in September 2021. In addition, because the Complainant’s VOICE 1.0 service was not accessible to Korean users, it is hardly to say that the Complainant conducted VOICE 1.0 social networking business in Korea.

(2) The disputed domain name is neither identical nor confusingly similar to the Complainant’s trademark.
The word “voice” is the general term which is being used not only by the Complainant but also by many other entities in Korea such as VOICE FRIENDS, VOICECON, VOICE DR, and EVOICE. Furthermore, the Complainant has not registered the trademark VOICE in Korea which seems improbable to obtain its registration even if the Complainant would file for it in Korea. In addition, since the disputed domain name <voiceits.com> is a unique combination of the word “voice” and word “its”, it is unlikely to confuse with the Complainant’s domain name <voice.com>.

(3) The Respondent has rights or legitimate interests in the disputed domain name because the disputed domain name was legitimately registered to manage the website of “voiceits” which is the social network service in Korean language for Internet users who can share their interests, favourites, and opinions.

(4) the disputed domain name is registered and is being used in good faith. The Respondent has used the disputed domain name to operate the website of the noncommercial and self-funded social networking platform. Since the Respondent has provided only information on public blockchain EOS community, he is not a competitor to the Complainant. After the submission of the Complaint, the Respondent’s website currently included in the main page the statement that “the VOICEITS is not related to Block.one and provides only updated information on Block.one and EOS”. Further, the Respondent has also deleted the EOS mark and the “solid heptahedron” trademark on his website. In addition, the Respondent has never attempted to sell, lease, or transfer the disputed domain name to others.

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case, the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. However, the Complaint was filed in English.

The Complainant requests that the language of proceeding be English for the following reasons. The Respondent has registered the disputed domain name that is nearly identical to the Complainant’s English trademarks VOICE. The Respondent has also paired that English language trademark with the English word “its”. Moreover, the website appearing at the disputed domain name replicates the social media service previously offered under the Complainant’s EOS, with the English words “EOS Newsletter”. Finally, allowing the dispute to proceed in Korean would unfairly disadvantage and burden the Complainant and delay the proceedings. On the other hand, the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not understand fully English.

Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it would accept the Complaint in English and the Response in Korean – which it has done, and that it would render this Decision in English.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of several U.S. trademark applications for the trademark VOICE and has also provided ample evidence of its use of the VOICE mark since as early as 2019 when it first launched the VOICE social media platform. In addition, the Complainant has been operating its official website via the domain name <voice.com> which was registered by the Complainant in 2019. Furthermore, based on the content (in particular the Complainant’s logo and mark) of the website to which the disputed domain name resolved indicates that the Respondent seems to have been targeting the Complainant’s mark which may also support a finding that the Complainant’s trademarks have achieved significance as a source identifier. (Section 1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel is convinced that the Complainant has adequate common law trademark right in the VOICE mark through its use and presence on the Internet for purposes of case standing and assessing this first element.

The disputed domain name includes the Complainant’s trademark VOICE in its entirety together with a term “its”. The Panel’s assessment of identity or confusing similarity involves a straightforward comparison between the domain name and the textual components of the relevant mark. Adding such term is not sufficient to prevent a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark. (Section 1.8 of WIPO Overview 3.0).

The Respondent contends that the Complainant’s trademark VOICE is not well known and is not registered in the Republic of Korea. However, noting the global nature of the Internet and Domain Name System, the jurisdiction where trademark is valid is generally not considered relevant to assessment under the first element of confusing similarity test. (Section 1.1.2, WIPO Overview 3.0)

Numerous UDRP panels have held that where a domain name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, it is sufficient to consider the domain name “confusingly similar” to that mark within the meaning of the Policy (Section 1.7 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test. (Section 1.11.1, WIPO Overview 3.0)

Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0)

Firstly, the Complainant contends that it has never licensed or authorized the Respondent to use the Complainant’s trademark VOICE or to register any domain names incorporating it, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case.

Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant alleges that the Respondent is posing as and attempting to pass itself off as the Complainant by imitating the Complainant’s copyrighted website content of the original VOICE 1.0 platform including the EOS and “solid heptahedron” marks without the consent of the Complainant. On the other hand, the Respondent rebuts that the term “voice” is a generic and dictionary word and he has used the disputed domain name to manage the noncommercial and self-funded social networking platform which provides information on public blockchain EOS community. However, based on all the available facts the Panel considers that the disputed domain name was used targeting the Complainant’s trademarks and its business of EOS rather than using the claimed dictionary meaning. The Panel found that the disputed domain name consisting of the Complainant’s VOICE mark in its entirety plus an additional term “its” which is confusingly similar to the Complainant’s mark and carries a risk of implied affiliation. (Section 2.5.1 of WIPO Overview 3.0). The Respondent also indicates that in order to avoid any confusion he currently adds the disclaimer statement in the main page of his website that ‘the VOICEITS is not related to Block.one and provides only updated information on Block.one and EOS’. In this circumstance the Panel considers this disclaimer as an admission by the Respondent that users may be confused. (Section 3.7 of WIPO Overview 3.0) The Panel assumes that the Respondent’s current website was made to create impression that the Respondent conducts bona fide activities. Finally, the Panel found no evidence to suggest that the Respondent has been commonly known by the disputed domain name.

Thus, the Panel concludes that the Respondent failed to come forward with any appropriate evidence that might demonstrate his rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.

Firstly, the Panel found that the Complainant has rights in the VOICE trademark as early as in 2019 through its use and presence on the Internet, which is more than a year earlier than the Respondent registered the disputed domain name targeting the VOICE trademark.

The Respondent’s website to which the disputed domain name resolved also undoubtedly targets the Complainant’s business and trademarks by mimicking the contents of the Complainant’s website and including the Complainant’s logo and trademarks. In this circumstance, it seems inescapable that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademarks. Further, also noting the numerous third-party publications discussing the Complainant, the Respondent in all likelihood registered the disputed domain name to take advantage of the goodwill of the Complainant’s trademarks.

Secondly, the evidence before the Panel shows that at the time of filing the Complaint the Respondent’s website to which the disputed domain name resolved, not only imitated the content of the Complainant’s original VOICE 1.0 platform but also used the EOS mark and the “solid heptahedron” trademark without the consent of the Complainant. The Panel considers that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the association or affiliation of the Complainant. In the light that the disputed domain name resolved to a website which appears to impersonate the Complainant by mimicking the content of the Complainant’s website, the Panel concludes the registration and use of the disputed domain name are in bad faith.

The Respondent also indicates that in order to avoid any confusion he currently adds the disclaimer statement in the main page of his website that “the VOICEITS is not related to Block.one and provides only updated information on Block.one and EOS”. In this circumstance, the Panel considers this disclaimer as an admission by the Respondent that users may be confused and this moreover cannot cure the fact that the Respondent’s site copied the mark and logo of the Complainant. (Section 3.7 of WIPO Overview 3.0).

Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.

7. Decision

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 <voiceits.com> be transferred to the Complainant.

Moonchul Chang
Sole Panelist
Date: January 12, 2022