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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlockFi Inc. v. WhoisSecure / Isaac Orija, Lavender

Case No. D2021-4414

1. The Parties

The Complainant is BlockFi Inc., United States of America (“U.S.”), represented by Haynes and Boone, LLP, United States of America.

The Respondent is WhoisSecure / Isaac Orija, Lavender, Nigeria.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2021. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2022, 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 January 5, 2022 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 January 5, 2022.

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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2022.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 9, 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.

4. Factual Background

The Complainant is a financial service company founded in 2017 dedicated to cryptocurrencies and traditional financial and wealth management products. The Complainant platform manages more than USD 2 billion in assets.

The Complainant is the owner of the U.S. Trademark Registration for BLOCKFI (Reg. No. 5989814) registered on February 18, 2020 in classes 36 and 42.

The disputed domain name was registered on June 7, 2021.

The disputed domain name resolved to a website purporting to be the Complainant and offering services like the Complainant’s, including cryptocurrency wealth management services, such as trading, borrowing and an interest account, as well as a bitcoin credit cards.

5. Parties’ Contentions

A. Complainant

The Complainant contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the disputed domain name is confusingly similar to the trademark of the Complainant. The Respondent intended to create a false sense of legitimacy by using the Complainant’s copyrighted material, a substantially similar logo, and the famous third-party mark “Visa”- which is used in connection with more than one billion credit cards in order to encourage users to provide personal and/or financial information.

Rights and legitimate interests

The Complainant states that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name is used to impersonate the Complainant webpage.

In addition, the Respondent has not been commonly known by the disputed domain name, nor has acquired trademark or service mark rights in this respect.

Finally, the Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Registration and use in bad faith

The Complainant argues that after being made aware of the Respondent’s infringing activity in relation to the BLOCKFI trademark, the infringing website was taken down by the registrar after the Complainant filed an abuse notice on June 15, 2021.

The Respondent’s registration and use of the disputed domain name constitutes a bad faith disruption of the Complainant’s business in violation of 4(b)(iii) of the Policy because the disputed domain name was intended to divert Internet users away from the Complainant’s own website to the Respondent’s website - which purported to offer the Complainant’s services (or similar services) - thereby disrupting the Complainant’s business.

Further, where the Respondent’s website resolved at the disputed domain name, purported to offer the Complainant’s services (or similar services), and incorporated the BLOCKFI trademark, it is clear that the Respondent registered and was using the disputed domain name, <blockfivisa.com>, to intentionally create a false affiliation, and likelihood of confusion, with the Complainant and its BLOCKFI trademark in order to divert Internet users from the Complainant’s legitimate site for the Respondent’s own commercial gain. Such actions constitute bad faith registration and use of the domain name under 4(b)(iv) of the Policy.

The Respondent’s actual knowledge of the Complainant’s rights when it registered the disputed domain name constitutes adequate evidence of bad faith under the Policy. The Complainant’s BLOCKFI mark has no dictionary meaning, but rather, is a term invented by the Complainant and is therefore distinctive for the Complainant’s corresponding services. As such that there is no plausible reason for the Respondent to legitimately choose to use the term “BlockFi” in connection with the famous third party mark “Visa”, incorporate the BLOCKFI trademark in connection with its website, use the Complainant’s copyrighted material on its website, and purport to offer services identical and related to the Complainant’s own services other than in bad faith.

The Complainant request the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the 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 such domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant have established their trademark rights in BLOCKFI as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

The Panel is also prepared to find that the disputed domain name is confusingly similar to the Complainant’s trademark BLOCKFI. The addition of the trademark VISA to the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.

The Complainant has stated that the disputed domain name resolved to a website purporting to be the Complainant and offering services like the Complainant’s, including cryptocurrency wealth management services, such as trading, borrowing and an interest account, as well as a bitcoin credit card with the Complainant’s trademark displayed on the website.

In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant trademark when registering the disputed domain name since the disputed domain name is a combination of the Complainant’s trademark BLOCKFI and the well-known VISA trademark, this being a credit card offered by the Complainant as part of its services.

In addition, the use of the disputed domain name by the Respondent is also in bad faith. The Respondent created a website imitating all the features of the Complainant’s original website.

The failure of the Respondent to answer the Complainant’s Complaint and take any part in these proceedings also suggests in combination with other factors bad faith on the part of the Respondent.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <blockfivisa.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: February 23, 2022

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