WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Web 3.0 Technologies Foundation v. Registration Private, Domains By Proxy LLC / Su Tingting, Hangzhou Midaizi Network Co., Ltd.
Case No. D2021-3593
1. The Parties
The Complainant is Web 3.0 Technologies Foundation, Switzerland, represented by Fenwick & West, LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy LLC, United States / Su Tingting, Hangzhou Midaizi Network Co., Ltd., China.
2. The Domain Name and Registrar
The disputed domain name <polkadot.com> 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 October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2021, 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 November 18, 2021 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 November 23, 2021.
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 December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2022. On December 4, 2021, the Respondent sent an email communication to the Center. On January 11, 2022, the Respondent sent several email communications to the Center confirming that her or his communication on December 4, 2021 was a Response.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 20, 2022. 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.
On January 22, the Complainant submitted an unsolicited supplemental filing which in turn led to the Respondent submitting an unsolicited supplemental filing later the same day.
4. Factual Background
According to the Complaint, the Complainant is a foundation which funds research and development related to “the decentralized web”. Its flagship project is POLKADOT, apparently a platform and technology using specialized blockchains known as parachains to enable cross-blockchain transfer of any type of data or asset. This technology has been available to the public under POLKADOT since at least October 2017.
In conjunction with its POLKADOT platform, the Complainant has developed a proprietary digital token under the name DOT. DOT digital tokens enable users to create new parachains by “staking” and “bonding” their DOT tokens. The official public launch of the Complainant’s parachains and the first auction of parachains using DOT tokens was scheduled to take place in November 2021.
The Complainant promotes and makes available its technologies from a website to which the domain name <polkadot.network> resolves. The website uses a black, white and pink trade dress.
The Complainant’s Twitter account, @polkadot, has some 766,000 followers. There are more than 58,000 active participants in the POLKADOT sub-Reddit and over 35,000 subscribers to the POLKADOT YouTube channel.
The Complainant owns a number of registered trademarks including:
(a) Swiss Registered Trademark no. 730123, POLKADOT, which has been registered effectively from April 10, 2019;
(b) European Union Trademark No. 1493647, POLKADOT, which has been registered effectively from June 25, 2019;
(c) United Kingdom Registered Trademark No. UK00801493647, POLKADOT, which has been registered with effect from March 26, 2020; and
(d) United States Registered Trademark No. 6,337,234, POLKADOT, which was registered on
May 4, 2021.
The Swiss, European Union and United Kingdom trademarks are registered in respect of a wide range of goods and services in International Classes 9, 38 and 42. The United States trademark is registered in respect of downloadable and recorded computer software in International Class 9 for a wide range of activities.
The disputed domain name was first registered in 1995.
In late March 2021, the Complainant was negotiating with the then owner of the disputed domain name for the purchase of the disputed domain name for a price in the order of USD 600,000.
On March 28, 2021, however, the then owner transferred the disputed domain name to a third party. The Complainant was unaware of this transaction at the time.
On April 5, 2021, one of the Complainant’s employees received a message on the Telegram platform offering to sell the disputed domain name to the Complainant for USD 77 million. According to the Complainant, the offeror was identified by the username @btctodamo0n. The offeror also referred to himself in the message chain as “Jeff”.
According to the Complainant, the offeror congratulated the Complainant on the then forthcoming plans for the official parachain launch. The offeror also stated that she or he intended to transfer her or his Bitcoin holdings to DOT. The offeror also indicated that, if the Complainant did not buy the disputed domain name, the offeror would use it to support a project compatible with the Complainant’s POLKADOT platform.
On April 20, 2021, the Complainant’s domain name broker was informed of the transfer of the disputed domain name on March 28, 2021 and that the new (unidentified) owner was prepared to transfer the disputed domain name only for USD 80 million.
The Respondent claims it obtained the disputed domain name only in June 2021.
At the time the Complaint was filed, the disputed domain name resolved to a website headed “PolkaHub” with the strapline “Unify your Polkadot experience”. The website was in a black, gray and white colour scheme with pink highlights evocative of the colour scheme used by the Complainant on its website. The Respondent’s website also used as the browser icon the symbol “P.” in the same font as the Complainant’s “P.” logo and in which the dot was depicted in pink. In addition, the letter “o” in the name was depicted in pink in the same shade as used on the Complainant’s website such as for the dot element of its “P.” logo.
After the Complaint was filed, the website was changed so that the “P.” logo no longer appeared as the browser icon; the solid pink “o” in the word “PolkaHub” was changed to a hollow, pink “o” and a disclaimer has been added at the foot of the landing page “Polkadot.com is in no way affiliated with Web3 Foundation or Parity Technologies. It is a community-run knowledgebase and toolkit.” A disclaimer of association is also the first entry on the FAQ page. The colour scheme is still evocative of the Complainant’s trade dress. The strapline under the PolkaHub heading has also changed to “The unofficial hub of a unified Dotsama experience” with the word “unofficial” highlighted in pink.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Supplemental Filings
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
In the present case, the Panel considers it is appropriate to admit the Complainant’s unsolicited supplemental filing.
The Respondent has advanced claims in the Response which the Complainant could not reasonably have anticipated. In particular, the Respondent has claimed that it became the registrant of the disputed domain name only in June 2021 not April 2021 when the Complainant was informed by a domain broker that the transfer occurred. Also, the Respondent claims to be a non-profit entity which made the disputed domain name available to a “Bruno”1 to establish a community resource related to the Complainant’s platform. The Respondent claims that “Bruno” is a former employee or affiliate of the Complainant and in daily contact with the Complainant.
It was appropriate for the Complainant to address these matters in a supplemental filing. In the interests of fairness, the Panel will also admit the Respondent’s supplemental filing in reply.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks for POLKADOT identified in Section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark only.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent became the registrant of the disputed domain name after the Complainant had registered its trademark and also after the Complainant began using its trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
“Polkadot” is an ordinary English word but the website to which the disputed domain name resolves is not directed to the dictionary meaning of “polkadot” or the study or some other activity related to “polkadot”.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent denies that it was the holder of the disputed domain name in April and May 2021 or that it offered to sell the disputed domain name to the Complainant for USD77 – 80 million. Instead, it says it acquired the disputed domain name on June 1, 2021 through its domain broker 4.Cn. It does not explain why it acquired the disputed domain name or how much it paid for it. Instead, it says it has lent, or rented, the disputed domain name for free to “Bruno”, a former employee or affiliate of the Complainant to develop a community for people interested in the Complainant’s platform. According to the Respondent, “Bruno” is doing this with the knowledge and permission of the Complainant.
In its supplemental filing, the Complainant denies authorising the use of the disputed domain name for the PolkaHub site. While the Respondent makes a number of assertions about “Bruno’s” relationship to the Complainant, these are all second hand statements as there is no statement from “Bruno” himself or other evidence objectively indicating his authority from the Complainant.
In some cases, a right or legitimate interest can arise in a domain name which resembles a trademark where the domain name is used in connection with some goods or services associated with or an adjunct to the goods or services provided by the trademark owner. Examples include nominative “fair use” by resellers or distributors. See e.g. WIPO Overview 3.0, section 2.8. While it is not necessary that the holder of the subject domain name has the permission of the trademark owner, it is usually necessary for the holder to satisfy the so-called Oki-data factors (after Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903):
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Until the Complaint was filed, the website to which the disputed domain name resolved clearly failed at least the third requirement above.
Furthermore and in any event, it is not generally permissible to register a domain name which consists solely of the Complainant’s trademark as in such cases there is a very high risk of false, implied affiliation. See e.g. WIPO Overview 3.0 sections 2.5.1, 2.7.2 and 2.8.2.
Having regard to these considerations, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Complainant contends that the Respondent was the party offering to sell the disputed domain name to the Complainant for USD 77 or 80 million in April 2021. In addition, the Complainant points to the way the disputed domain name has been used misleadingly to suggest an association with the Complainant and its Polkadot platform.
As noted above, the Respondent denies that it was the party offering to sell the disputed domain name to the Complainant (if that happened), claiming it obtained the registration in June 2021 for an unspecified purpose and for an unspecified amount.
The Respondent claims that it, like the Complainant, is a non-profit entity. The Respondent further claims that it has not and does not sell domain names. It says it has “lent” the disputed domain name to “Bruno” for a non-profit venture creating a community hub relating to the Polkadot platform.
Unfortunately, the Registrar has failed to provide the information about when the Respondent did in fact become the registrant with it.
As the Respondent points out, the Complainant has not provided any evidence of the alleged offers to sell the disputed domain name for USD 77 – 80 million. However, the Complainant has provided some quite specific information about the alleged offeror including the Telegram handle. Whether that is the handle of the Respondent is unclear.
On the other hand, as it appears the previous owner of the disputed domain name was prepared to sell it to the Complainant in late March 2021 for USD 600,000, it does not seem plausible that the Respondent would acquire it in June 2021 for a lesser sum. It seems even less plausible that the Respondent would “lend” out the disputed domain name to someone for free.
In addition, there is considerable reason to doubt the Respondent’s claim that it is a “not-for-profit” entity which has never sold a domain name. First, the Respondent describes the company 4.Cn as its domain name broker through which it claims to have obtained the disputed domain name and paid a fee of 4 per cent of the purchase price. According to its website 4.Cn is “an eName.com company” which claims to be one of the largest domain name vendors, particularly in China. 4.Cn’s website landing page bears a copyright notice “Copyright © 2008-2022 Hangzhou Midaizi Network Co., Ltd. All Rights Reserved”. Thus, it appears that the relationship between 4.Cn and the Respondent is very much more than merely domain broker and customer.
Secondly, as the Complainant contends and the Respondent does not dispute, the Respondent appears to have registered numerous other domain names which play upon other successful trademarks including <glamazon.cn>, <wwwebay.cn>, <amazoncoin.cn>, <quber.cn>, <visavisa.cn>, <xzoom.cn>, <visad.cn>, <applenet.cn>, <applead.cn>, <bmw123.cn<, <visaweb.cn>, <amazontext.cn>.
In these circumstances, it seems to the Panel much more likely that the Respondent was well aware of the Complainant and its trademark when it became the registrant of the disputed domain name – whether that was in March, April, or June 2021.
Very shortly after that acquisition, the disputed domain name was put to use for the PolkaHub website which, as described above, was designed misleadingly to portray itself as the official Polkadot platform or closely associated with that platform.
In the absence of any explanation by the Respondent of why it registered the disputed domain name and the rejection of the Respondent’s purported justification through “Bruno”, the Panel infers that the Respondent registered the disputed domain name at least to use it in the way and for the purposes for which it was in fact used; that is, misleadingly to appear to be the official Polkadot platform or closely associated with that platform.
Registration for this purpose constitutes registration in bad faith under the Policy as it impermissibly seeks to take advantage of the trademark significance of the disputed domain name without the Complainant’s permission. The misuse of the Complainant’s trademark in the fashion described further constitutes use in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under 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 name, <polkadot.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: February 3, 2022
1 The Panel has not reproduced the individual’s full name.