WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Block.one v. See PrivacyGuardian.org / Burstein-Applebee, Jerry K. Chasteen

Case No. D2021-1516

1. The Parties

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

The Respondent is See PrivacyGuardian.org, United States / Burstein-Applebee, Jerry K. Chasteen, United States.

2. The Domain Name and Registrar

The disputed domain name <eos-voice.live> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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 May 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 May 21, 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 May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021.

The Center appointed John Swinson as the sole panelist in this matter on June 28, 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 creates platforms and tools that enable the building of blockchain supported and decentralized businesses, applications, and collectives.

The Complainant holds trademark applications and registrations in various countries for the trademarks EOS and VOICE. The Complainant started to use the EOS trademark in 2018 in respect of various blockchain technologies and services and the VOICE trademark in June 2019 for a social platform.

These trademark applications include U.S. Trademark Application No. 88252885 for EOS with a filing date of January 7, 2019 and U.S. Trademark Application No. 88461547 for VOICE with a filing date of June 6, 2019. Both of these applications have been published for opposition.

The Respondent did not file a Response, so little is known about the Respondent.

The disputed domain name was registered by the Respondent on August 30, 2020.

Until April 23, 2021, the disputed domain name resolved to a website that was designed to look like a website operated by the Complainant and that mimicked the Complainant’s <voice.com> website. Currently, the website at the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

The Complainant began using the mark EOS in commerce in connection with the EOS cryptocurrency and various blockchain–related services including public advocacy, education, and events services since at least as early as 2018.

Since that time, the Complainant has extensively used and continues to use the mark EOS in connection with its various blockchain technologies and services. In May 2018, the Complainant’s EOS cryptocurrency was a top performer among competing coins in the market. In June 2018, Complainant completed an initial coin offering (ICO) of EOS, raising over USD 4 billion over the year of distribution, with 1 billion tokens sold – the largest ICO in history.

And as recently as April 2021, EOS was discussed online as the “top cryptocurrency” to watch in 2021.

The Complainant began using the mark VOICE in connection with its social network and 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 and continues to use the VOICE trademark in connection with its social platforms.

On April 16, 2021, the Complainant officially announced the launch of its VOICE 2.0 platform, coming summer 2021, where users can create digital art and buy and sell such works as NFT digital artifacts.

The Complaint includes details of various trademark applications and registrations, including U.S. Trademark Registration No. 5947762 for EOSIO and the applications discussed in section 4 above.

The Complainant has developed substantial goodwill in its EOS and VOICE trademarks, as well as its official domain name, <voice.com>.

Reputable financial companies in the industry have recognized the Complainant’s marks as leading global brands. The EOS and VOICE trademarks have been recognized in Forbes, SiliconAngle, CoinDesk, and TheBlockCrypto, among others.

The disputed domain name is nearly identical, and confusingly similar, to the EOS and VOICE trademarks because it combines the Complainant’s two trademarks in whole. The only difference between the disputed domain name and the Complainant’s EOS and VOICE trademarks is that the disputed domain name adds a hyphen “-” between the two combined marks: “eos-voice.”

The Complainant’s EOS and VOICE trademarks are not generic or descriptive terms in which the Respondent might have an interest. The Complainant’s EOS and VOICE trademarks are well-known and have acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the trademarks in connection with the Complainant’s goods and services.

The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s EOS or VOICE trademarks or any domain names incorporating the EOS or VOICE trademarks.

The Respondent is not commonly known by the disputed domain name.

The nature of the disputed domain name, comprising the Complainant’s identical EOS and VOICE trademarks, combined and paired with a hyphen, immediately suggests that the Respondent is holding itself out as the Complainant or as an affiliate of the Complainant.

The Respondent has been using the disputed domain name to imitate the Complainant’s website. Until at least April 23, 2021, the website at the disputed domain name was a near identical copy of the Complainant’s official <voice.com> website, on which the Respondent was holding itself out as the provider of the Complainant’s own VOICE platform. As such, the Respondent is attempting to pass itself off as the Complainant as it purported to be the Complainant, or to be the provider of the Complainant’s own social platform services by imitating the Complainant’s copyrighted website content without authorization. The Respondent’s use of a confusingly similar domain name in association with a website which is a replica of the Complainant’s website is clearly not evidence of a bona fide use or of any rights or legitimate interests on the part of the Respondent.

The Respondent deliberately chose a domain name that is essentially identical to the Complainant’s EOS and VOICE trademarks and appears to be attempting to seem associated or affiliated with 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 EOS and VOICE trademarks.

Given the Complainant’s worldwide reputation and the presence of its EOS and VOICE trademarks on the Internet, the Respondent was or should have been aware of the EOS and VOICE trademarks long prior to registering the disputed domain name.

The Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s EOS and VOICE trademarks as to the source, sponsorship, affiliation or endorsement of the website. This also appears designed to disrupt the business of a competitor.

The website at the disputed domain name improperly solicited users to enter their EOS private keys to access VOICE tokens. This is fraudulent solicitation and creates a security risk to users’ private information and personal data. The Respondent’s use of the disputed domain name for a fraudulent purpose of its own financial gain is bad faith.

These design similarities between the Complainant’s and the Respondent’s websites reveal that the Respondent must have not only known about, but also visited, the Complainant’s <voice.com> webpage to copy the exact webpage layout, color scheme, and images. Because the Respondent likely knew about the Complainant’s trademarks when it registered the disputed domain name, the Panel should find the Respondent acted in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(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.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.

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. Identical or Confusingly Similar

The Complainant relies on both registered and unregistered trademark rights. The Panel notes for example the European Union Trade Mark No. 018088955 for EOSIO, registered on November 9, 2019; and the Singaporean trademark with number 40201914162R for EOS registered on July 1, 2019.

The U.S. trademark applications for VOICE and EOS are pending at the date of this decision. A pending trademark application does not by itself establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy.

In addition, for the sake of completeness, the Panel will focus upon common law trademark rights.

To establish common law trademark rights for purposes of the Policy, the Complainant must show that its trademark has become a distinctive identifier which consumers associate with the Complainant’s services. See for example Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773; and L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962.

The Complainant has provided evidence that, in respect of the field in which the Complainant operates, the Complainant has rights in the EOS trademark and newly developed rights in the VOICE trademark, for the purposes of the Policy.

The fact that the Respondent is targeting the Complainant’s trademark (as discussed below) supports the Complainant’s assertion that its trademarks have achieved significance as a source identifier for the purposes of the Policy.

The disputed domain name includes the Complainant’s trademarks EOS and VOICE in their entirety.

The Panel accordingly concludes that the disputed domain name is confusingly similar to both the Complainant’s VOICE and EOS trademarks, disregarding the Top-Level Domain “.live”.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. 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.

Previous UDRP 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 sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

None of the circumstances listed in paragraph 4(c) 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 EOS or VOICE trademarks. The Complainant has rights in the EOS and VOICE trademarks which predate the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; to the contrary, the evidence points to the Respondent illegally masquerading as the Complainant. The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby 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 the Respondent has no rights or any legitimate interests in the disputed domain name.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

In the present circumstances, the fact that until April 2021 the disputed domain name resolved to a website which impersonates the Complainant and copied one of the Complainant’s websites leads the Panel to conclude the registration and use of the disputed domain name are in bad faith.

The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering the disputed domain name and then by using the disputed domain name to impersonate the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant to impersonate the Complainant. Further, the Respondent failed to provide any accurate contact information for itself on the website at the disputed domain name.

The website at the disputed domain name improperly solicited users to enter their EOS private keys to access VOICE tokens. The Panel agrees with the Complainant that the Respondent’s website appears to be some form of fraudulent scheme which is manifestly evidence of bad faith – see Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” and similar fraudulent activities amount to use in bad faith. This case was cited with approval in Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773 which involved a website that was masquerading as the website of a financial advisory firm.

Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy applies in the present case.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain name

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 <eos-voice.live> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: July 11, 2021