As Eleanor Roosevelt famously said, “Learn from the mistakes of others. You can’t live long enough to make them all yourself.” In our free time, we like reading up on UDRP proceedings to stay up-to-date on the latest cybersquatting trends, case outcomes, and costly mistakes others make so we can ensure we are able to give our clients the best chance of success. A recent UDRP case caught our attention because it serves as a good lesson for why it is critical to conduct research before bringing a UDRP, as well as filing a trademark in multiple jurisdictions. Continue reading to learn how a leading cryptocurrency exchange platform lost a UDRP filing against a registrant.
The Facts of the UDRP Case
Complainant – Coinbase
- Coinbase has rights in the COINBASE mark through its registrations with the United States Patent and Trademark Office (USPTO).
- Coinbase contends that the coinbase.info domain name is identical or confusingly similar to their trademark as it incorporates the mark in its entirety and adds the .info generic top-level domain.
- Coinbase argues that the respondent lacks rights and legitimate interests in coinbase.info for the following reasons:
- Respondent is not commonly known by the domain name
- Coinbase has not authorized or licensed the respondent to use its COINBASE mark in the domain name
- Respondent does not use the domain name for any legitimate use or offering of goods or services but instead hosts parked, pay-per-click links on its coinbase.info website
- Respondent’s activities do not, in fact, relate to coin appraisal and trading. The terms of the domain name relate to cryptocurrency mining
- Coinbase believes that the respondent registered and uses coinbase.info in bad faith for the following reasons:
- Respondent offers the domain name for sale
- Respondent hosts parked, pay-per-click links on the coinbase.info website
- Respondent registered coinbase.info with knowledge of Complainant’s rights in the COINBASE mark
- Respondent’s claimed rights in the COINBASE mark do not predate Complainant’s registration in 2012
- Respondent’s claimed registration is not in coin trading and appraisal but in other related areas to Complainant’s business
- Respondent’s alleged business operating as “Coinbase” with a Chinese character is not legitimate, but a scam perpetuated to lend legitimacy to its infringing business, of which they have other infringing domain names registered as well
- There are discrepancies between the dates of the same supposed agreement, there is no corroboration of the agreement with other parties
- Parking of domain names is demonstrative of bad faith
- Respondent has been operating as “Coinbase Studio” with a Chinese character since 2012.
- Respondent is in the business of coin trading and appraisal, which is completely different from Complainant’s business.
- The coinbase.info domain name, along with the Respondent’s business name and Chinese characters, describes the business.
- The Respondent’s COINBASE mark is registered in a different country than Complainant’s.
- The Respondent rebutted that they use the name with a legitimate offering of goods or services as described above.
- The Respondent argued that they did not register or use coinbase.info in bad faith for the following reasons:
- The Respondent did not elect to have pay-per-click links parked on the domain name’s resolving website. The price listed online is the minimum price set by the registrar.
- Respondent purchased the domain name for brand protection.
- Respondent and its other “infringing domain names resolving websites” operate in cryptography and blockchain not cryptocurrencies like the Complaintant.
The Panel finds that the slight difference between Respondent’s domain name and Complainant’s trademark is confusingly similar to Complainant’s COINBASE mark.
- The WHOIS information for coinbase.info identifies the domain name’s registrant as “Zhuang Qi Yu,” and contains no evidence showing that Respondent is commonly known by COINBASE or by coinbase.info. The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
- Respondent’s use of the domain name to host pay-per-click links is not a bona fide offering of goods or services, nor a non-commercial or fair use.
- The Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests.
However, the Respondent shows that it too has trademark rights in COINBASE. The Respondent demonstrates it has trademark rights in COINBASE based on Chinese trademark registrations for COINBASE from April 29, 2020, to October 13, 2024. The Respondent’s trademark rights are presumptively valid and Complainant has not successfully discredited the relevant documents offered in support of the Respondent’s trademark rights.
Coinbase claims that even if the Respondent is authorized to use the trademark, the Coinbase trademark rights predate the Respondent’s rights. Coinbase further argues that since the Chinese mark does not cover products or services related to Respondent’s claimed business, any rights in COINBASE resulting from the Chinese registration are inferior to Coinbase’s rights.
There is no requirement that Respondent’s rights be superior to those of Complainant in order to demonstrate rights for a domain name. The Respondent need only have some rights or legitimate interests, and it does.
The Finding: Complaint Denied
All three elements required under UDRP were not met. Because of this the Panel concluded that the domain name remains in control of the Respondent.
This UDRP case is a prime example for businesses everywhere. A threat quickly becoming the norm is for cybersquatters to register trademarks in other countries. We’ve seen international domain squatting get the best of well-known companies like Groupon and Pinterest, which is why we recommend a proactive brand protection strategy.
In addition, it is essential to work with a team that knows the ins and outs of the UDRP process. We always conduct basic trademark research before proceeding with UDRP so our clients don’t end up in the same position as Coinbase.