WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Optimism PBC v. See PrivacyGuardian.org/ Norma Johnson
Case No. DIO2021-0025
1. The Parties
Complainant is Optimism PBC, United States of America (United States”), represented by Cobalt LLP, United States.
Respondent is See PrivacyGuardian.org, United States / Norma Johnson, United States.
2. The Domain Name and Registrar
The disputed domain name <optimusm.io> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 Complainant on October 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 21, 2021.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred to as the “Complaint”) satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 12, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 19, 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
Founded in 2019, Complainant is a Delaware public benefit corporation dedicated to enhancing fair access to the block chain and other financial transactions on the Internet, through the development of open-source software used in conjunction with Ethereum, a community run technology intended for cryptocurrency and blockchain transactions. Complainant serves its customers through its online portal (“www.optimism.io”) and its offices located throughout the United States and internationally.
Complainant first began using the trademark OPTIMISM in 2019 and filed trademark applications shortly thereafter. Through its use online, the OPTIMISM trademark has become known as a standard in open-source access to Ethereum. Complainant filed a trademark application on February 26, 2021, which is scheduled for publication in November 2021. Complaint, Annex 3. However, Complainant contends it is qualified for common law trademark rights based on its use on the Internet beginning in 2019.
Ethereum has experienced rapid growth, including a 371% year to date increase, and has become an essential building block in the blockchain industry. As a result, Andreesen Horowitz, a leading international venture capital company has invested USD25 million in a Series A investment. Complaint, Annex 4. In just under two years, Complainant has received over USD25.8 million in funding. Complaint, Annex 5.
Respondent registered the disputed domain name <optimusm.io> on July 20, 2021. Complaint, Annex 1. Respondent is using the disputed domain name to resolve to a web site which is a virtual copy of Complainant’s web site to which <optimism.io> resolves. Complainant is using the disputed domain name to steal the cryptocurrency wallet access’ credentials of unsuspecting users. Complaint, Annex 6. Complainant and Respondent are in no way related, nor has Complainant licensed or permitted Respondent to use Complainant’s mark.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s OPTIMISM trademark. Complainant alleges that Respondent has no rights or legitimate interests in respect to the disputed domain name. Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name varies only from Complainant’s trademark in the substitution of one letter in the middle of the disputed domain name. Respondent substitutes a “u” for the second “i” in the OPTIMISM trademark in the disputed domain name, which is registered in the “.io”domain, a country-code Top-Level Domain (“ccTLD”) for the British Indian Ocean Territory. It has long been held that “(a) domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” WIPO Overview 3.0, Section 1.9. As the disputed domain name varies from Complainant’s trademark by only one letter, the Panel finds that the disputed domain name is confusingly similar to Complainant’s OPTIMISM trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Used in Bad Faith
The disputed domain name differs from Complainant’s domain name and trademark OPTIMISM by only one letter, substituting a “u” for an “i.” This results in a visual similarity, which is compounded by the fact that the content of Respondent’s website is virtually identical to that of Complainant, in effect mimicking Complainant’s trademark and business. In addition, the Panel notes that the disputed domain name is registered in the same ccTLD in which Complainant’s domain name is registered (as Complainant operates <optimism.io>). The Panel finds probable that Respondent has registered and used the disputed domain name to take advantage of the likelihood of confusion between the disputed domain name and Complainant’s trademark (and domain name). Moreover, the computer key “u” is immediately to the left of the computer key “i.” This is another indication of typosquatting (“(e)xamples of such typos include (i) adjacent keyboard letters.”) Id. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <optimusm.io> be transferred to Complainant.
M. Scott Donahey
Date: December 1, 2021