The Complainant is Universal Navigation Inc. d/b/a Uniswap Labs, United States of America (“United States” or “U.S.”), represented by O'Melveny & Myers, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Future XXX, Hong Kong, China, represented by Cornwalls, Australia.
The disputed domain name <uniswap.com> (hereinafter “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 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 the Complainant on May 21, 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 26, 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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. On June 23, 2021, the Respondent requested the automatic four days extension for response, pursuant paragraph 5(b) of the Rules, and the Center granted June 27, 2021 as the new due date for response. The Response was filed with the Center June 27, 2021.
The Center appointed Edoardo Fano, Lawrence K. Nodine and WiIliam A. Van Caenegem as panelists in this matter on August 3, 2021. The Panel finds that it was properly constituted. Each member of 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 August 5, 2021, the Complainant submitted a request that the Panel exercise its discretion to grant leave to file further statements and evidence, and on August 10, 2021, the Respondent objected to the Complainant’s request to file further submissions. On August 10 and August 12 respectively, the Complainant and the Respondent insisted on their positions.
Pursuant to the paragraph 12 of the Rules, On August 13, 2021, the Panel issued a Procedural Order, requesting the Complainant to file further statements and evidence on or before August 20, 2021, and the Respondent to submit comments, if any, to respond to the Complainant’s further submissions, on or before August 27, 2021.
On August 20, 2021, the Complainant submitted supplemental filing to the Complaint, and on August 27, 2021, the Respondent submitted its comments.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
The Complainant is Universal Navigation Inc. d/b/a Uniswap Labs, a U.S. company operating in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency, owning several trademark registrations and applications for UNISWAP, among which:
- United States Trademark Registration No. 6177986 for UNISWAP, registered on October 20, 2020;
- International Trademark Registration No. 1609750 for UNISWAP, registered on April 20, 2021.
The Complainant operates on the Internet at the website “www.uniswap.org”.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the Disputed Domain Name was registered on July 30, 2000. According to the Respondent’s legal representative’s declaration, on April 7, 2021 it was acquired by the Respondent. It actually resolves to a website promoting the trade of sea urchin, a sushi ingredient known by its Japanese “uni”.
The Complainant states that the Disputed Domain Name is identical to its trademark UNISWAP, as the Disputed Domain Name wholly contains the Complainant’s trademark and consists solely of the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since it has not been authorized by the Complainant to register the Disputed Domain Name or to use its trademark within the Disputed Domain Name, it is not commonly known by the Disputed Domain Name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant submits that the Respondent has registered the Disputed Domain Name in bad faith, since the Complainant’s trademark UNISWAP is distinctive and internationally known. Therefore, the Respondent, a blockchain-focused venture capital company operating in the same field as the Complainant, targeted the Complainant’s trademark at the time of registration of the Disputed Domain Name and the Complainant contends that the first use of the disputed domain by the Respondent, namely to redirect traffic to a subpage of the website belonging to SushiSwap, a Complainant’s direct competitor, and to create confusion in the marketplace and the risk of fraud, qualifies as bad faith registration and use. The actual use of the Disputed Domain Name, resolving to a website which promotes the trade of sea urchin, a sushi ingredient known by its Japanese “uni”, is a transparent attempt to evade liability for the Respondent’s bad faith conduct.
The Respondent states that the “uniswap” name is being used in relation to many open-source software packages concerning the Uniswap Protocol, without fees charged by the operators of the Protocol and without the Complainant claiming to be the owner of the Protocol, and the first release of the Uniswap Protocol in November 2018 predates the Complainant’s earliest trademark filing date.
Moreover, the Respondent asserts to have rights or legitimate interests in respect of the Disputed Domain Name since the latter was purchased in order to be used in relation to the open-source Uniswap Protocol. The asserted redirection of the Disputed Domain Name to a subpage of SushiSwap website is not established in the Complaint and SushiSwap, being also an open-source derivative of the Uniswap Protocol, cannot be considered a Complainant’s competitor. Due to the filing of the present Complaint, the Respondent decided to use the Disputed Domain Name for an unrelated business in order to avoid further escalation while the present proceeding was pending.
The Respondent submits that the Disputed Domain Name was registered without any prior awareness of the Complainant, but being aware of the open-source Uniswap Protocol, made available since November 2018 and not being a good or service provided by the Complainant. Therefore, the Complainant failed to establish any bad faith by the Respondent, and the Respondent submits that the approach taken by the Complainant is itself indicative of bad faith on the part of the Complainant.
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 Panel finds that the Complainant has rights the trademark UNISWAP, as evidenced by its ownership of United States Trademark Registration No. 6177986 and International Trademark Registration No. 1609750 for UNISWAP. The Panel also finds that the Disputed Domain Name is identical to the trademark UNISWAP.
It is well accepted that a generic Top-Level Domain (“gTLD”) or a country code Top-Level Domain (“ccTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Respondent argues that the term “uniswap” was used in association with early versions of the software prior to the date of first use reflected in the Complainant’s registrations, but this is irrelevant to Policy paragraph 4(a)(1), which only requires that Complaint have rights as of the filing date of the complaint. Questions of prior use should be considered when evaluating Policy paragraphs 4()(ii) or 4(a)(iii). See WIPO Overview 3.0, section 1.1.3.
The Panel finds that the Complainant has therefore met its burden of proving that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(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.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one.
As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant, as set out above, asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since it has not been authorized by the Complainant to register the Disputed Domain Name or to use its trademark within the Disputed Domain Name, it is not commonly known by the Disputed Domain Name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the Disputed Domain Name.
The Respondent’s use of the Disputed Domain Name to be taken into consideration is not the actual use, that is redirecting to a website promoting the trade of sea urchin, a sushi ingredient known by its Japanese “uni”, as the Respondent itself asserts that, after the Complaint was filed, it decided to use the Disputed Domain Name for an unrelated business in order to avoid further escalation while the UDRP proceeding was pending.
As regards the use of the Disputed Domain Name at the time the Complaint was filed, the Complainant submits that the redirection of the Disputed Domain Name to a subpage of the website belonging to SushiSwap, a Complainant’s direct competitor, cannot be considered as bona fide offering of goods or services, while the Respondent asserts that the above redirection has not been proved in the Complaint and that in any case SushiSwap, being also an open-source derivative of the Uniswap Protocol, cannot be considered a Complainant’s competitor.
The Panel finds that the Respondent’s contentions are not credible. In its supplemental filing, the Complainant offered credible social media evidence that the Respondent was aware of the Complainant months before it purchased the Disputed Domain Name and that the Respondent’s agents considered the Complainant a competitor. The Respondent ignored this evidence in Supplemental Statement, an omission that raises doubts about the Respondent’s candor when denied initial knowledge of the Complainant or it considered the Respondent to be a competitor.
The Respondent also initially challenged the Complainant’s allegation that the Respondent redirected Internet users from the Disputed Domain Name to the domain name <sushiswap.com>, forcing the Complainant to offer evidence (a screenshot dated May 18, 2021) clearly showing the redirect. The Respondent ignored this evidence in its Supplemental Comments. Concerned about this fundamental issue, the Panel, in accordance with its powers to consult matters of public record (see WIPO Overview 3.0, section 4.8), has checked the Wayback Machine (“www.archive.org”) and found some pages to which the Disputed Domain Name has resolved in May 2021, when the Complaint was filed, corresponding to a subpage of the website belonging to SushiSwap, which operates in the same financial market as the Complainant.
The Panel rejects the Respondent’s primary contention that it may use UNISWAP as a domain name because the underlying software is open source. Being the Complainant the owner of the trademark UNISWAP in relation to the financial field of blockchain, cryptocurrency and trading protocol software for digital currency, the fact that the trademark UNISWAP is used for an open-source software does not itself entitle any party other than its owner to use it as a trademark or to incorporate it in a domain name without permission, as stated by several panels in previous UDRP decisions concerning other open-source software. In its supplemental Comments, the Respondent fails in its effort to distinguish the Complainant’s reliance on decisions like Neo4j, Inc. v. Domains by Proxy, LLC/Benjamin Nussbaum, WIPO Case No. D2018-1193. The Respondent says that the Complainant has not proved that it owns the earlier versions of the software, but this misses the point. Regardless of who owns the underlying software, the Respondent has no right to use the trademark to identify its related services, and, in particular, no right to use the Disputed Domain Name to redirect Internet users to the website at <sushiswap.com>.
The Respondent also contends that the Complainant allows third parties to use of the UNISWAP trademark. However, a trademark owner may permit referential fair use of its marks, which is all that the Respondent’s evidence suggests. This is a far cry from registering the disputed domain name, and redirecting Internet users to a website of a competitor of the Complainant’s.
Based on the facts of this case, the Panel finds that the Respondent’s use of the Disputed Domain Name does not consist of a bona fide offering of goods or services giving rise to rights or legitimate interests in the Disputed Domain Name.
Moreover, the Panel finds that the composition of the Disputed Domain Name carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.
Regarding the registration in bad faith of the Disputed Domain Name, the reputation of the Complainant’s trademark UNISWAP in the financial field of blockchain, cryptocurrency and trading protocol software for digital currency is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the Disputed Domain Name, especially because the Respondent operates in the same field as the Complainant. As noted above, the Panel takes special note of the Respondent’s failure to address (in its supplemental Comments) the Complainant’s persuasive social media evidence that the Respondent was well aware of the Complainant and considered it a rival. The Respondent dropped the gauntlet with its initial denials and its credibility suffers by its abandonment of these important contentions.
Although the Disputed Domain Name was first registered by a third party on July 30, 2000, a date well before the Complainant’s trademark registrations were granted and the relevant applications were filed, and even before the Uniswap Protocol itself was created, the Respondent acquired the Disputed Domain Name after the Complainant’s trademark rights had been registered by the Complainant in relation to the financial field of blockchain, cryptocurrency and trading protocol software for digital currency. See WIPO Overview 3.0, section 3.8.1. See also WIPO Overview 3.0, section 3.9 (the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith).
The Panel further notes that the Disputed Domain Name is also used in bad faith since it was redirecting to a website belonging to a Complainant’s direct competitor, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the Disputed Domain Name’s source, sponsorship, affiliation or endorsement.
The above suggests to the Panel that the Respondent intentionally registered and is using the Disputed Domain Name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <uniswap.com> be transferred to the Complainant.
Edoardo Fano
Presiding Panelist
Lawrence K. Nodine
Panelist
WiIliam A. Van Caenegem
Panelist
Date: September 3, 2021