WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Centri Technology, Inc. v. Alina Prokopenko
Case No. DEU2018-0017
1. The Parties
The Complainant is Centri Technology, Inc. of Seattle, Washington, United States of America (“United States”), represented by Perkins Coie, LLP, United States.
The Respondent is Alina Prokopenko of Rome, Italy.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <atonomi.eu> (the “Disputed Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Disputed Domain Name is Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2018. On June 1, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2018, the Registry 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 June 5, 2018, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 7, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the ”Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 30, 2018. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complaint is a Delaware corporation with an office in Seattle, Washington, United States. It has either directly or through its subsidiary Atonomi, LLC used the term “Atonomi” to promote its business and services since July of 2017. It owns the domain name <atonomi.io> 1 (the “Atonomi Domain Name”), which it has continuously used in connection with its business since July of 2017.
The Complainant provides “Internet of Things” (“IoT”) data security solutions, with its technology integrated into IoT solutions produced by well known companies such as Arm, Flex, and Intel, among others.
The Complainant’s technology involves what is described as an “Atonomi Token” which according to the Complainant “enables a decentralized, immutable security infrastructure and creates a system of consistently increasing engagement in the Atonomi Network. The Atonomi Token is used within the security protocol for device registration, activation, reputation management and commerce transactions. Key participants such as OEM/device manufacturers, distributors, device owners and auditors are anticipated to seek Atonomi Token rewards for participating in the Atonomi Network”.
In summary the Complainant’s Atonomi technology provide a security protocol and infrastructure to enable potentially billions of IoT devices to have trusted interoperability for both data and commerce. Further details of the Complainant’s technology are available on its website.
The Complainant first began advertising its Atonomi technology in July of 2017, and announced what it describes as a “presale” of its business in February of 2018. This was, as the Panel understands it, a precursor to inviting public investment in the Complainant’s business. Within 30 days of the presale announcement, The Complainant’s Atonomi “Telegram” channel had more than 15,000 members. Within 60 days, the Complainant’s Atonomi newsletter had more than 20,000 subscribers. Its Atonomi “Telegram” channel currently has more than 20,000 members, and its newsletter has over 28,000 subscribers worldwide.
The Disputed Domain Name was registered on May 11, 2018. According to the Complaint, the Disputed Domain Name resolved to a website which in large measure mimics the Complainant’s website but which seeks to deceive visitors to the website into sending “ETH” (a form of cryptocurrency) to the Respondent. Specifically, the webpage linked to the Disputed Domain Names omits the “DOWNLOAD SDK” and “WHITELIST FAQs” buttons that appear on the Complainant’s genuine website but instead has a “CONTRIBUTE” button. When users click the “CONTRIBUTE” button featured, they are taken to a page advertising the “Atonomi PRE-SALE” for the price of “ETH: $[figure]” (the price fluctuates by the minute) with a space for the visitor to enter their “MyEtherWallet” address for payment. Completing the transaction will send funds to the Respondent in a manner which means the Respondent is untraceable.
5. Parties’ Contentions
The Complainant says that “Atonomi” is a term in which it has unregistered trademark rights. It has submitted extensive evidence in this regard. This issue and the relevant evidence are discussed further below. It says the Disputed Domain Name is identical to this ATONOMI trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “Atonomi”
The Complainant says the Disputed Domain Name has been registered and is being used in bad faith. It says the Disputed Domain is being operated to trick unsuspecting visitors into believing not only that Disputed Domain Name and the website to which it resolves are the Complainant’s, but that visitors are then invited to send payment to participate in the Atonomi pre-sale. This is a dishonest and fraudulent activity which is clearly in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that:
(i) The Disputed Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) The Disputed Domain Name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The Disputed Domain Name has been registered or is being used in bad faith.
In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the unregistered trademark ATONOMI for the purpose of this proceeding. The filed evidence demonstrates that it has attracted a significant degree of publicity and public interest since launching its Atonomi technology, especially in specialized markets interested in this type of technology. The word “Atonomi” has, so far as the Panel is aware, no other meaning save in relation to the Complainant. The Complainant has filed numerous examples of publicity it has received in third party journals directed towards European Union consumers and in particular to the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) including the following (translations have been provided where applicable):
- Article published on May 17, 2018, on Italian news agency website, “www.adnkronos.com”, discussing Centri’s launch of the Atonomi service.
- Article published on May 17, 2018, to United Kingdom news website, “www.prnewswire.co.uk”, discussing the launch of the Atonomi service.
- Spanish language article published on May 17, 2018, to Spanish news website, “www.diariodeleon.es”, discussing the launch of the Atonomi service.
- Article published on March 30, 2018, on cryptocurrency website, “www.cointelegraph.com”, quoting David Fragale (co-founder of Atonomi) on how new European Union privacy laws will impact blockchain.
- Spanish language article published on May 17, 2018, by Europa Press Agency website, “www.europapress.es”, on the launch of Atonomi’s beta version of the Identity Registry Network.
- Article published on April 6, 2018, to “www.medium.com” discussing potential partnership between IPSX (based in Switzerland) and Atonomi.
- French language article published on May 9, 2018, to French blockchain and cryptocurrency website, “www.journaldutoken.com”, discussing the overwhelming number of European Union investors wanting to sign up for the Atonomi service.
- French language article published on May 11, 2018, to French blockchain and cryptocurrency website, “www.journaldutoken.com”, discussing the influx of investors in the Atonomi whitelist as well as discussing the general popularity of the Atonomi offerings.
- Article published on December 16, 2017, by London, United Kingdom based website, “www.financialdigest.com”, discussing Atonomi and their research partnership with Dr. John H. Clippinger.
- Article published on January 10, 2018, by “www.semiengineering.com”, interviewing Atonomi CEO Vaughan Emery about the Atonomi offerings and the impact of the European Union’s implementation of the General Data Protection Regulation in 2018 on IoT platforms.
- Article published on January 16, 2018, by blockchain industry website, “www.chain-finance.com”, written by Windsor, United Kingdom based author, Matthew Warner, discussing Atonomi’s collaboration with Swytch, a renewable energy incentive platform built on blockchain.
- Article published on January 31, 2018, by global digital news website, “www.digitaljournal.com”, written by London, United Kingdom based author, Tim Sandle, interviewing Atonomi CEO Vaughan Emery about the Atonomi service and cybersecurity.
- Article published on April 3, 2018, by London, United Kingdom based technology news website, “www.chipIn.com”, discussing a potential Australia, United States and global cryptocurrency exchange regulations, interviewing Atonomi co-Founder, David Fragale, on the same, and linking to the Atonomi.io website.
Overall the Panel is satisfied that this evidence establishes the Complainant has unregistered or common law trademark rights in ATONOMI (the “ATONOMI trademark”) for the purpose of this proceeding, and for example in England and Wales this would be sufficient to establish an action for the tort of passing off under English law, and as such that the Disputed Domain Name is identical to a name in respect of which a right is recognized or established by the national law of a Member State. The top-level suffix (“.eu”) is to be ignored in making this comparison.
Accordingly the Panel finds that the first condition of Paragraph B11(d)(i) of the ADR Rules has been fulfilled.
B. Rights or Legitimate Interests
“Atonomi” is a word which has no other meaning so far as the Panel is aware save in relation to the Complainant and its technology.
Paragraph B11(e) of the ADR Rules 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:
(1) prior to any notice of the dispute, the Respondent has used the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the Disputed Domain Name, even in the absence of a right recognized or established by national and/or Community law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the Disputed Domain Name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ATONOMI trademark. The Complainant has prior rights in the ATONOMI trademark 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 or legitimate interests in the Domain Name. In those circumstances, the Panel considers that the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and second condition of Paragraph B11(d)(1) of the ADR Rules has been fulfilled.
C. Registered or Used in Bad Faith
Although the Panel has determined that the Complainant has sufficiently met the criteria for the second condition under section Paragraph B11(d)(1) of the ADR Rules, and it is therefore unnecessary for the Complainant to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented. Further, the third ADR condition is posed alternatively, meaning that it is sufficient for the Complainant to prove that the Disputed Domain Name is either registered or used in bad faith. As the Complainants have provided arguments in support of both registration and use in bad faith, the Panel will examine both grounds for the sake of completeness.
The evidence filed by the Complainant clearly shows that the Respondent is engaged in a fraudulent scheme, impersonating the Complainant in order to trick would-be investors into paying (via a cryptocurrency transaction) money to the Respondent.
Under the ADR Rules evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that: “the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent” (ADR Rules paragraph B11(f)(iv)).
The Respondent’s conduct falls squarely within the type of circumstances to which the ADR Rules refer. The fact that the conduct is dishonest exacerbates the bad faith of the Respondent
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of Paragraph B11(d)(1) of the ADR Rules has been fulfilled.
For the foregoing reasons, in accordance with Paragraph B11 of the ADR Rules, the Panel orders that the Disputed Domain Name, <atonomi.eu>, be revoked.
Nick J. Gardner
Date: August 4, 2018
1 <atonomi.io> is registered to an individual who is an employee, the Director of Marketing, for the Complainant.