WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beyond Protocol, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Fred Rinstone

Case No. D2021-2828

1. The Parties

Complainant is Beyond Protocol, Inc., United States of America (“United States”), represented by Rimon, P.C., United States.

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Fred Rinstone, United States.

2. The Domain Name and Registrar

The disputed domain name <beyondprotocol.tech> (the “Domain Name” is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 9, 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 12, 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

According to Complainant, it “was established in 2018 and is headed by co-founder and chief executive officer, Jonathan Manzi (“Manzi”).” Complainant states that it “is developing blockchain related technology around communication between Internet of things (IoT) devices.”

Complainant alleges that, since 2018, it has offered various goods and services under the unregistered mark BEYOND PROTOCOL, including recorded computer software and downloadable computer software for use in connecting Internet of things (“IoT”) devices based on distributed ledger architecture for enhanced security, for use in secure cross-silo communication of IoT devices, and for use in conducting blockchain-based data management, data analysis, and data processing. Complainant operates a website at “www.beyond.link”, and owns the domain name <beyondprotocol.com>, which domain name redirects to Complainant’s “www.beyond.link” site.

Complainant annexes to the Complaint media reports that mention BEYOND PROTOCOL in reference to Complainant’s products and services. Complainant also states that it enjoys a robust social media presence with “tens of thousands of followers.”

The Domain Name was registered on June 22, 2021. The Domain Name resolves to a website which disseminates, according to Complainant, “damaging information about Manzi.”

The website contains various excerpts of criminal pleadings initiated against Manzi in the United States District Court for the District of Nebraska in 2019. The site also includes some commentary, apparently generated by Respondent, about the criminal case, such as” “Manzi is awaiting trial by a jury of his peers to see if he is guilty of 4 counts of Cyber intrusion,” and “It is shameful of these advisors to lend their names and credibility to mislead investors into a company whose CEO is facing jailtime,” and “The crypto space is rife with frauds and misinformation,” and “Do these sophisticated investors know who they are doing business with?”

In its Complaint, Complainant does not deny that federal criminal charges have been brought against Manzi.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name. With respect to the bad faith element, Complainant states:

“The motivation of the Respondent is clear: to criticize the Complainant and cause serious disruption and damage tom the Complainant’s business. The website that opens from the Domain Name contains information about a criminal complaint against Manzi, touts possible jail time for Manzi (“Beyond Protocol CEO Jonathan Manzi Federally Indicted Facing Up To 20 Years in Jail”), and questions why any party would do business with Manzi or Beyond Protocol (“Do these sophisticated advisors who they are doing business with?”)”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has unregistered rights in the common law trademark BEYOND PROTOCOL through use and consumer recognition since 2018 demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark with the addition of the generic Top-Level Domain (“gTLD”) “.tech”, which can be disregarded here.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Although Respondent did not bother to respond to the Complaint, it appears from the website to which the Domain Name resolves that Respondent is pointedly critical of Complainant and its CEO, Manzi. There is no evidence of record of any communication between the Parties. Nor is there any evidence that Respondent derives, or has sought to derive, any commercial gain from his use of the Domain Name.

Complainant cites a UDRP decision from 2001, Compagnie Générale des Matières Nucléaires v. Greenpeace International, WIPO Case No. D2001-0376, for the proposition that the use of a domain name identical to a complainant’s trademark for criticism purposes is not a legitimate use of the domain name, since a domain name identical to the mark in question is “not necessary for that purpose.”

Indeed Section 2.6 of the WIPO Overview 3.0 states that “UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.” Further, the respondent’s alleged fair use must be “genuine and noncommercial.” Id. at section 2.6.1.

There is no evidence in the record to indicate that Respondent to date has made any commercial use of the Domain Name, but there is no guarantee that such a state of affairs will endure. The critical content of Respondent’s website appears to be genuine, and Complainant has not suggested that the statements of fact (as opposed to opinion) are untruthful in any particular respect.

This Panel finds the most persuasive treatment of this issue, namely, whether a respondent may claim a legitimate interest in a domain name that is identical to a complainant’s trademark and may avoid a finding of bad faith in such circumstances, to be found in the prior UDRP decision in The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022. In that case, the panel transferred the domain name <fbcglenarden.com> to the complainant church, The respondent in First Baptist was a disgruntled former congregant who redirected the domain name to a website offering critical commentary about religion and churches, and criticism of complainant’s pastor in particular. In ordering a transfer of the domain name, the panelist in First Baptist acknowledged the lack of unanimity on the issue of registering a domain name identical to a complainant’s trademark and using it to post critical speech. The panel reasoned:

In the event that a domain name confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there had historically been some division between proceedings involving United States parties and proceedings involving non-United States parties, with few non-United States panelists adopting the reasoning in what was at the time called View 2 (now captured in the WIPO Overview 3.0 section 2.6.2).

“[…] Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.”

“This Panel has consistently adhered to View 1 when, as here, the disputed domain name is identical to Complainant’s mark. E.g., Joseph Dello Russo M.D. v. Michelle Guillaumi, WIPO Case No. D2006-1627; InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC v. James Harrison, WIPO Case No. D2006-1230; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778; Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175. […] As stated in the Dello Russo case, supra:”

“Respondent’s selection of Complainant’s name for her criticism site allows her to make use of Complainant’s service mark in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant’s permission to distribute her message. Such use is not legitimate under paragraph 4(a)(ii) of the Policy, and the safe harbor of paragraph 4(c)(iii) is not available because Respondent undeniably intended ‘to misleadingly divert consumers'.”

“The present case illustrates very well why applying [this view] will not interfere in any way with Respondent’s vigorous exercise of his free speech rights on the Internet. This decision will not require Respondent to change one word of the content of his principal site (including his statements about Complainant), and will not require Respondent to move that content to a new web address. Respondent’s current site will proceed exactly as it does now. Respondent does not post any content at the domain name that incorporates Complainant’s mark; copying Complainant’s mark is not used for free speech, indeed for any speech at all. All commentary may be found at Respondent’s principal website, “www.pulpit-pimps.org”. Rather than using the disputed domain name as a forum for criticism of Complainant or its pastor Respondent uses it only to attract, then immediately divert, individuals searching for Complainant.”

“Preventing such an appropriation of another’s asset intentionally to mislead is precisely why the Policy was adopted. As the Panel pointed out in Justice for Children v. R neetso / Robert W. O’Steen, supra (emphasis in original):”

“Decisions under the Policy focus upon a respondent's use of another's mark in a domain name to attract Internet users to respondent's site. This is true in typosquatting cases and in cases where a respondent selected his domain name in anticipation of subsequent sale to the mark owner. The content of Respondent's sites in these two categories of cases in which respondents almost uniformly lose is irrelevant to the harm to the mark owner and to the unwary consumer. That harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant's mark. And that is exactly the harm the Policy was adopted to address.
[…] By intentionally selecting Complainant's mark to present his views, he has not made a legitimate use of the domain names.”

The Panel finds the reasoning of the panel in First Baptist to be very persuasive, and the same essential facts apply in the instant case. See also Puravankara Projects Limited v. Saurabh Singh, WIPO Case No. D2014-2054 (“Respondent has used a domain name which is closely aligned to the Complainant’s trade mark and which is likely to make a misrepresentation to Internet users that any associated website is connected with the Complainant”).

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. In the First Baptist and Puravankara cases discussed in the previous section, the panels’ findings of “bad faith” were based on essentially the same rationale as was employed to support their findings that the respondents lacked rights or legitimate interests in respect of the domain names. Relying on those cases, the Panel in the instant case also concludes bad faith registration and use of the Domain Name for the reasons set forth in the previous section.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <beyondprotocol.tech> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: November 26, 2021