The Complainant is Northern Data AG, Germany, represented by Wiley Rein LLP, United States of America (“United States”).
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Ilo Chidera, United States.
The disputed domain names <northern-data.net> and <northerndata.org> are registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 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 June 25, 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 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2021.
The Center appointed John Swinson as the sole panelist in this matter on July 30, 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.
The Complainant provides computing products and services to customers engaged in Bitcoin and blockchain applications, as well as artificial intelligence and other industries.
The Complainant was previously named Northern Bitcoin AG, and renamed to Northern Data in late 2019. The Complainant operates its business at the website located at the domain name <northerndata.de>.
The Complainant owns German trademark registrations for and relating to NORTHERN DATA, including German Registration No. 302019241673 for NORTHERN DATA filed on December 28, 2019 and registered on January 22, 2020.
The Respondent did not file a response, so little is known about the Respondent.
The disputed domain name <northerndata.org> was registered on April 8, 2021. The disputed domain name <northern-data.net> was registered on May 25, 2021.
Previously, the websites at the disputed domain names mimicked the Complainant’s legitimate site by displaying identical content copied from the Complainant’s legitimate website. At the present time, the disputed domain names do not resolve to an active website.
The Complainant made the following submissions:
As Northern Bitcoin AG, the Complainant was well known for its provision of high-performance computing products and services to customers engaged in Bitcoin and blockchain applications, as well as artificial intelligence and other industries. As of December 30, 2019, the Complainant rebranded itself as NORTHERN DATA. The Complainant then publicly announced via a press release issued on February 10, 2020, its business combination with established American company Whinstone US, Inc. Consequently, the Complainant gained international recognition under the mark as NORTHERN DATA for the provision of high performing computing products and services to customers engaged in Bitcoin and blockchain applications, as well as artificial intelligence and other industries.
Consumers have come to recognize that any trademarks, words and domain names containing NORTHERN DATA belong to the Complainant and are indicative of the Complainant as the source of the marks and associated goods and services.
Although the Complainant’s establishment of common law trademark rights prior to the registration of the disputed domain names satisfies the Policy, the Complainant also has established registered trademark rights in the NORTHERN DATA trademark. The Complainant’s numerous German trademark registrations include word and image marks registered as early as January of 2020.
The disputed domain names are identical or confusingly similar to the Complainant’s NORTHERN DATA trademark.
It is well established that the use of a domain name for illegal activity, such as phishing, impersonation, passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1.
There is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain names without the Complainant’s authorization to perpetrate illegal activity – that is, to impersonate the Complainant and the Complainant’s legitimate website for the purpose of seeking to defraud the consuming public.
The websites available at the disputed domain names mimicked the Complainant’s legitimate website by displaying identical content copied from the Complainant’s legitimate website.
Because the Respondent used the disputed domain names for an illegal purpose, namely to defraud consumer, demonstrates that it cannot have legitimate interests in the disputed domain names.
Panelists have often found that the use of a domain name for fraudulent purposes constitutes bad faith.
In the present case, the Respondent took advantage of the Complainant’s NORTHERN DATA mark, which was established well prior to the registration of the disputed domain names, to impersonate the Complainant for the purpose of confusing consumers and enticing them to divulge personal information and to deposit or invest funds.
The Respondent did not reply to the Complainant’s contentions.
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.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The Complainant owns a German trademark registration for NORTHERN DATA.
Disregarding the Top-Level Domains “.net” and “.org”, the disputed domain name <northerndata.org> is identical to the NORTHERN DATA trademark, and the disputed domain name <northern-data.net> is confusingly similar to that trademark.
The fact that the Respondent is targeting the Complainant’s trademark (as discussed below) supports the Complainant’s assertion that its trademark has achieved significance as a source identifier.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
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.
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 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 names or to use the NORTHERN DATA trademark. The Complainant has rights in the NORTHERN DATA trademark which precede the Respondent’s acquisition of the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names; 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 names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the disputed domain names.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain names.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.
In the present circumstances, the fact that the disputed domain names resolve to a website which impersonates the Complainant leads the Panel to conclude the registration and use of the disputed domain names are in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the Complainant’s trademark. By registering the disputed domain names and then by using the disputed domain names to, in effect, impersonate the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant.
The use of the Complainant’s trademarks and content in the Respondent’s website is misleading. The Respondent’s website site was designed to be confused for a website belonging to or connected with the Complainant. Compare Solstice Marketing Corporation v. Solsticesunglasses-Discount-Shop-Sale.com, WIPO Case No. D2017-1919.
It appears likely that the Respondent registered the disputed domain names to commit a fraud on consumers by using the disputed domain names for websites that pretended to be the Complainant’s website. Fondation Bettencourt Schueller v. WhoisGuard Protected, WhoisGuard, Inc. / Web designer Web designer, WIPO Case No. D2018-2750; Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC/Kemal Aydin, Kemal, WIPO Case No. D2020-3433; The Prudential Assurance Company Ltd. v. Prudential Securities Ltd., WIPO Case No. D2009-1561; Graybar Services Inc. v. Graybar Elec., WIPO No. D2009-1017; Gateway Fiber LLC v. Wix.com Ltd., Wix.com Ltd. / Ali Oudah, Ayadi Group, WIPO Case No. D2021-1736.
The Panel also notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773.
The Panel finds that the Respondent has both registered and used the disputed domain names in bad faith. The Panel concludes that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.
The Panel also finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy. This also could disrupt the business of the Complainant.
The fact that the disputed domain names do not currently resolve to an active website does not prevent a finding of bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain names.
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 names <northern-data.net> and <northerndata.org> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: August 11, 2021