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M31.Capital won over M31Capital.com

M31 Management Limited, China, operates from the domain M31Capital.com. It has a stylized trademark for M31 in several locales. Their domain was registered on March 29, 2018.

Meanwhile, M31.Capital was registered on September 20, 2019 and it resolves to an active website in English, Chinese and Korean languages, which includes in its heading the M31 mark.

The ensuing UDRP is interesting as it involves a .com and the shortest possible alternate domain via the use of a gTLD, in this case dot .capital.

The Respondent is a US company that provides bona fide services and has been commonly known by the marks M31 and M31 CAPITAL for nearly two years.

The three member panel at the WIPO decided by majority vote that the Respondent did not register the domain in bad faith and that the two businesses developed independently utilizing the same brand. It ordered the domain M31.Capital to remain with the Respondent.

One panelist, Dr. Hong Xue, delivered a lengthy reasoning why the domain should be transferred to the Chinese company.

The domain transfer was denied.

M31 Management Limited v. Nathan Montone
Case No. D2021-2297

1. The Parties

The Complainant is M31 Management Limited, China, represented by Baker & McKenzie, China.

The Respondent is Nathan Montone, United States of America (“United States”), represented by Sullivan & Worcester LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <m31.capital> is registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 July 19, 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 July 20, 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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Response was filed with the Center August 13, 2021.

The Center appointed Reyes Campello Estebaranz, Dr. Hong Xue and Gary J. Nelson as panelists in this matter on September 6, 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 September 13, 2021, the Panel issued a Panel Order (Panel Order No. 1) requesting the Parties further clarification and evidence regarding: (i) whether or not the Complainant operates and/or has a location or another type of presence and/or promotion in the United States, and whether the content of its corporate website (linked to its domain name <m31capital.com>) was the same at the time of the registration of the disputed domain name or it was different; and (ii) whether the Respondent or any of its companies operate and/or has a location or any other type of presence and/or promotion in China, and whether the content of its corporate website (linked to the disputed domain name) was the same when it was first linked to the disputed domain name. Panel Order No. 1 indicated September 18, 2021, as a common deadline to the Parties for their responses.

On September 17, 2021, the Respondent responded to the Panel Oder No. 1. On September 18, 2021, the Complainant responded to the Panel Order No.1. On September 20, 2021, the Respondent forwarded to the Center a supplemental filing. On September 21, 2021, the Complainant forwarded an email communication to the Center expressing its objection to the Respondent’s unsolicited supplemental filing.
4. Factual Background

The Complainant is a company incorporated in Shanghai under the laws of China on August 10, 2016, and further incorporated under the laws of the Cayman Islands, United Kingdom, on April 30, 2019, with the same company name. The Complainant is active in the financial and investment sectors, being based in Shanghai and Beijing and operating internationally. The Complainant’s core business is providing consultancy and investment services to its global investors, for investing in China’s new technologies and innovative fast growing companies.

The Complainant operates under the trademark M31 (and a stylized version of this mark), which enjoys protection through various registrations thereof internationally, including:

– Chinese Trademark Registration No. 34840656, M31, figurative, registered on October 7, 2019, in class 36;
– Hong Kong, China, Trademark Registration No. 304496374, M31, figurative, registered on April 18, 2018;
– United Kingdom Trademark Registration No. UK00003304581, M31, word, registered on July 13, 2018, in class 36;
– European Union Trademark Registration No. 017889476, M31, word, registered on September 4, 2018, in class 36; and
– United States Trademark Registration No. 5781368, M31, word, registered on June 18, 2019, in class 36, (collectively “the M31 mark”).

The Complainant further owns various domain names comprising the M31 mark,1 including <m31capital.com> (registered on March 29, 2018), which is linked to its corporate website in English and Chinese languages.

The disputed domain name was registered on September 20, 2019, and it resolves to an active website in English, Chinese and Korean languages, which includes in its heading the M31 mark (being the number 31 placed in a lower level with respect to the letter “m”) and the word “capital”, located in the middle of the site in capital letters. The appearance and colors of the site are a combination of white background with letters in black and grey, being its sections placed in horizontal sequence at the top of the site below the heading, underlying the displayed sections in red. This website offers investment services in cryptocurrencies indicating on its landing site that “M31 Capital is a global investment firm focused exclusively on crypto assets and blockchain technology. We deploy capital on behalf of investors around the world through an active network participation strategy managed by our globally decentralized team […]”, being this text followed by a world map with four points located in New York, San Francisco, Shanghai and Seoul, and indicating the names of these same cities at the top of the map. The contact section of this site further includes a globe map pointing to these same cities (New York, San Francisco, Shanghai and Seoul) and includes a legend indicating, “M31 Capital has operations around the world and a globally decentralized team managing several crypto asset investment products with different strategies and risk profiles”. This website does not include any reference to the Respondent; it mentions the company M31 Capital Management LLC in the copyright of the site, and M31 Capital Partners LP, M31 Ventures and M31 Mining (with no indication of company form of the last two) in the “invest” section of the site. This website includes a “log in” section. This website does not include any legal, privacy or terms of use sections, and no fiscal numbers, addresses, telephone numbers, or other means of communication are provided, the sole contact provided is an email address and a link to a page in LinkedIn.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The disputed domain name is identical to the Complainant’s trademark, being the generic Top-Level-Domain (“gTLD”) irrelevant in the UDRP first element test.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent has been commonly known as “M31” or “M31 Capital”, there is no connection between the Parties, and the Respondent has not been authorized to use the Complainant’s trademark.

The disputed domain name was registered and is being used in bad faith. The cumulative circumstances of the case indicate that the Respondent registered the disputed domain name targeting the Complainant and its trademark to take unfair advantage of its prior rights, disrupting the Complainant’s business and intentionally attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark and corporate website for commercial gain.

The M31 mark is used in relation to a variety of services (including insurance consultancy, investment, brokerage, banking, and capital investment fund management services) in various jurisdictions worldwide. Through extensive use and promotion, the Complainant has established substantial goodwill and reputation in the M31 mark and its trading name M31 Capital, which the public identifies with the Complainant and its business. The Complainant is mentioned in various financial publications and has been awarded as top 10 China’s Emerging Venture Capital Institutions in 2020 by China Venture and 2020 China’s Top 10 Most Promising First-Time Funds by 36KR. Furthermore, the term “m31” is not common in the financial sector, the Respondent selected a gTLD (“.capital”) associated to the Complainant’s trade name and domain name <m31capital.com> (linked to the Complainant’s corporate website since March 29, 2018), and the Respondent has used the disputed domain name to offer the same type of services as the main Complainant’s business (investment services).

Due to the notoriety of the M31 mark and the Complainant in the financial and investment sector, the Respondent likely had knowledge of these prior rights when it registered the disputed domain name. The Respondent’s website operates in the same field as the Complainant, uses the M31 mark (with no authorization) and includes and “log in” section for potential investors, closely resembling the Complainant’s official website.

The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.

The Complainant’s response to Panel Order No. 1 may be summarized as follows:

The Complainant is the manager of a fund (“M31 Navigator Fund LP”), which has complied with the notifications ruled by the United States Securities and Exchange Commission, filing a notice of exempt offering of securities on February 3, 2020 (prior to same formality complied by the Respondent’s funds). The Respondent’s funds filed this notice on March 5, 2020 (the “M31 Capital Partners, LP” fund), and February 23, 2021 (the “M31Capital Bitcoin Access Fund, LP” fund).

Due to its long-term promotion and use, the M31 mark and the Complainant’s corporate website under the domain name <m31capital.com> have become widely known among investors and the relevant public. The Complainant’s founder has been actively promoting its business since 2018, including but not limited to the United States, on numerous events, interviews and publications. This promotional activity includes “Milken Institute Global Conference – Innovators who are changing Asia” (July 10, 2018), “2018 Future Investment Initiative Institute 2nd Edition” (October 23-25, 2018), “2019 Future Investment Initiative Institute 3rd Edition” (October 30. 2019), “2021 Future Investment Initiative Institute 4th Edition- Investing in tech: How will venture capital drive the next wave of innovation and entrepreneurship?” (January 27, 2021), “Bloomberg News – Bloomberg Markets: China Open” (February 22, 2021), “Global Counsel’s Panel – Investing trends in a post-covid era” (May 6, 2021), “The Stern Stewart Institute – The Charm of Contradictions” (February 2020), “AVCJ – China’s M31 Capital closes debut fund at $450m” (September 30, 2020), and “Financial Times – What tech investors are looking for in China” (June 15, 2021). The Complainant provides various evidences of these events and publications.

The Complainant registered the domain name <m31capital.com> on March 29, 2018. The Complainant’s website (with copyright dated 2019) and its ICP record proof that this website was published on January 30, 2019 (8 months before the registration of the disputed domain name). This initial website displayed the Complainant’s M31 mark and M31 Capital trade name, with the same combination of colors grey, black and dark red, although it had a different content in 2019 from its current version.

The Complainant further reiterates its allegations in the Complaint, adding some additional complementary arguments:

– The Respondent must have been aware of the existence of the Complainant because, if it has probably conducted (as it is commonly done) a domain name search visiting the relevant websites before registering the disputed domain name; the Respondent’s selection of the gTLD “.capital” instead of the most common gTLD “.com” implies its knowledge to the existence of the Complainant.

The Respondent’s website closely resembles the Complainant’s corporate website. The overall design and content displayed is very similar, for example the white background, the grey bar at the top of the website, and the color combination of grey, black and dark red, which were already present in the Complainant’s website on May 29, 2020. A graphic comparison of the Parties’ websites is provided.

In a subsequent email communication to the Center, the Complainant expressed its objection to the admission of the Respondent’s unsolicited supplemental filing.
B. Respondent

Key contentions of the Response may be summarized as follows:

The Respondent is the co-founder and CEO of M31 Capital Management LLC, a Connecticut limited liability company (registered in January 27, 2020), which owns and operates the website located at the disputed domain name. The Respondent adopted the marks M31 and M31 CAPITAL independently from the Complainant’s rights, in September 2019, as a reference to the Andromeda Galaxy, otherwise known as Messier 31 (“M31”), which is known to have an abundant amount of gold (aligned with the Bitcoin that is considered by the Respondent the only asset with a fixed supply).

The Respondent has rights and a legitimate interest in the disputed domain name. The Respondent’s actual use of the disputed domain name in connection with a bona fide offering of services began before any notice of the present dispute. The Respondent first learned about the Complainant when it was served with the Complaint in this proceeding, and it has been using the disputed domain for nearly two years for a bona fide offering of investment services in blockchain technology, crypto and other digital assets, which constitutes the exclusive focus of its business. The Respondent’s clients access its investment platform at the website located at the disputed domain name, where two crypto and blockchain technology investment funds managed by the Respondent (“M31 Capital Partners, LP” and “M31 Capital Bitcoin Access Fund, LP”) are offered (as indicated in the communications filed with the United States Securities and Exchange Commission). The Complainant is a China-based equity firm that invests in emerging businesses in China, not doing business in the United States (although owning a trademark registration in this country), and being its business unrelated to the Respondent’s business.

The Respondent has been commonly known by the marks M31 and M31 CAPITAL for nearly two years (since September 2019), being mentioned in various publications specialized in cryptocurrency. The disputed domain name resolves to the Respondent’s only website and the Respondent uses the disputed domain name for all of its email addresses. A transfer of the disputed domain name to the Complainant would result in an extraordinary and unfair interruption of the Respondent’s business and it would lead to confusion in the cryptocurrency and blockchain industry, where the disputed domain name is associated with the Respondent.

The disputed domain name was not registered and is not being used in bad faith; the Complainant has not established bad faith on the part of the Respondent. The Respondent has no history of cybersquatting or domain name trolling. In a sworn statement, the Respondent has affirmed it was unaware of the Complainant and its business when it registered the disputed domain name, purchasing the disputed domain name in good faith to use it in connection with its business. Neither the Complainant nor the Respondent is the sole user or owner of the M31 mark. The M31 mark is diluted in the marketplace and no one should have the exclusive rights over it. There are several third parties’ trademark registrations comprising or containing the term “M31”, at least 4 other entities with websites at domain names that contain the term “M31” that offer financial or technology services, and well-known products including this term (like the Samsung Galaxy M31).

The Respondent is using the domain name in connection with its bona fide business and not for any bad faith purposes. The Parties are not competitors, and the Respondent is not trying to undermine the Complainant’s business. The two businesses exist in completely different geographic and business niches (the Complainant is based in China and offers investing services in China’s innovative and fast growing companies, whereas the Respondent is based in the United States and is focused on crypto assets and blockchain technology). The distinguishing characteristics between the Parties’ websites and their businesses, corroborate the Respondent is not using the disputed domain name in bad faith. The Respondent’s website is distinguishable in appearance and overall commercial impression from the Complainant’s website, having a different landing page and a different distinct logo. Almost all websites, in particular websites offering direct client services, include a log in function.

The Respondent has cited previous decisions under the Policy and various sections of the WIPO Overview 3.0 that it considers supportive of its position, and requests the Panel to deny relief to the Complainant.

The Respondent’s response to Panel Order No. 1, provided in the form of a sworn declaration, may be summarized as follows:

Neither the Respondent nor its affiliated companies operate in China not having any physical location, employee or business entity and not making any marketing or promotion in this country. The Respondent’s website offers multiple language options, including English, Korean and Chinese, and the Respondent maintains a global network of connections and partnerships with analysts to obtain information about how cryptocurrency and blockchain technology markets are evolving around the world, being one of these analysts based in Shanghai, China. However, these partners and analysts only provide information to the Respondent, not being its employees and not marketing or promoting its business.

The Respondent’s website (linked to the disputed domain name) was published in 2020, and its content has not substantially changed since its initial launch. The Respondent provides various captures of its website obtained from the Internet archive WayBackMacine (dated September 27, 2020, November 1, 2020, January 21, 2021, March 5, 2021, March 31, 2021, and August 11, 2021). A globe map was added to the Respondent’s website (being shown in capture dated March 5, 2021 and successive) as an indication of the decentralized nature of its business and the digital asset field. This map highlights major crypto centers across the globe, including Shanghai, but the Respondent does not do business in China, nor does it have any entities or employees located in China.

The Respondent expressed its objection to the admission of the Complainant’s additional complementary arguments included in the response to Panel Order No.1, and submitted an unsolicited supplemental filing reiterating its allegations in the Response, and responding to the Complainant’s additional complementary arguments:

– The Respondent’s selection of “.capital” instead of “.com” does not rebut the fact that it was unaware of the Complainant’s existence when it registered the disputed domain name. The Respondent selected the disputed domain name because it contains its business name, and could not have chosen <m31.com> because an unrelated third party owns this domain name. The Respondent registered the disputed domain name just eight months after the Complainant launched its website, and the evidence provided by the Complainant is insufficient to prove that during this short period the Complainant’s trademark became well known in the United States.

– The Respondent’s website has used the same color combination since its launch, and includes different logos and marks than the ones included in the Complainant’s corporate website.

– The United States regulations on “Know Your Customer Evaluation” avoid the alleged likelihood of confusion between the Parties’ businesses, and allow the Respondent to keep close track of its investors, being able to confirm that it has no investors residing in Asia. Both of the Complainant’s and the Respondent’s businesses are addressed to generally highly sophisticated potential customers unlikely to make a mistake in deciding where to invest their money. The Respondent’s website does not prevent anyone from going to the Complainant’s website, and there is no evidence that there is or has been any investor confusion at any time.

6. Discussion and Findings

The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,2 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Unsolicited Supplemental Filings

Paragraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Supplemental filings are generally discouraged unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit a supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.

The Parties’ supplemental filings, exceeding the strict response to Panel Order No.1, concern to no new matters, reiterating their respective allegations in the Complaint or the Response, adding some complementary arguments, which the Panel believes that the Parties could reasonably have anticipated when they respectively filed their Complaint and Response. Furthermore, the Panel from the study of the case may have directly inferred most of these additional complementary allegations, and the Parties have reciprocally objected to these allegations.

In these circumstances, the Panel considers that the Parties will suffered no prejudice by in not admitting such filings.

The Panel considers that its decision to not admitting the Parties’ supplemental filings is consistent with the general principles set out in paragraphs 10 and 12 of the Rules, namely, that the Parties have been treated with equality, each has been provided with a fair opportunity to put its case forward and, likewise, each has taken up such opportunity.

B. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademark M31, both by virtue of its trademark registrations and as a result of its use of this trademark.

The disputed domain name incorporates the M31 mark in its entirety, and the gTLD “.capital” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The Panel considers that the M31 mark is recognizable in the disputed domain name, being the disputed domain name identical to this trademark. See sections 1.7, and 1.11, WIPO Overview 3.0.

Accordingly, this Panel finds that the first element of the Policy under paragraph 4(a)(i) has been satisfied.

C. Rights or Legitimate Interests, Registered and Used in Bad Faith

The Complainant has asserted that the Respondent has not been authorized to use the Complainant’s trademark and has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, 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”.

The Respondent’s position is that it uses the disputed domain name in connection with the bona fide business before any notice of the dispute, and its companies and business are commonly known by the terms corresponding to the disputed domain name <m31.capital>. The Respondent provides various evidences that corroborate that it started its business a couple months after the registration of the disputed domain name (on January 27, 2020), and it started the use of the disputed domain name in connection to its business’ website in 2020, being the first capture provided of this site dated September 27, 2020. The Respondent appears to have built up a business specialized in in crypto currencies and blockchain investments, having various funds registered and operating in the Unites States. In these circumstances, the Respondent seeks to demonstrate rights or legitimate interests in the disputed domain name in terms of either paragraphs 4(c)(i) or 4(c)(ii) of the Policy.

The Complainant submits that the reason for the Respondent’s selection of the name “M31 Capital” is based upon its prior awareness of the Complainant’s goodwill in its M31 mark in an intent to seek unfair commercial advantage by free riding on this. If that were to be proved on the balance of probabilities, it would defeat the Respondent’s case under paragraphs 4(c)(i) and 4(c)(ii) of the Policy in that no offering of goods and services in a business founded with such knowledge and intent could be described as bona fide, nor could it be said that the Respondent could claim to be commonly known by a domain name which it had adopted in order to free ride on the rights of the Complainant.

The Presiding Panelist therefore considers the central question in this case, whether the Respondent genuinely adopted “M31 Capital” as its business name registering the disputed domain name to match this name independently of the Complainant’s rights, or whether its various explanations (an sworn declaration) are pretextual and designed to cover up an intent to take unfair advantage of the Complainant’s reputation and goodwill. The Presiding Panelist will therefore proceed to examine the second and third elements of the Policy together.

The Presiding Panelist notes that the disputed domain name is identical to the M31 mark and, considering the gTLD “.capital”, it is identical to the Complainant’s domain name <m31capital.com> (linked to the Complainant’s corporate website). These circumstances seem at first glance to be more than coincidental, given that the Parties are in the same line of business, providing investment services, although specialized in different type of assets or investments.

To the Presiding Panelist’s eyes, the few examples cited by the Respondent of third party trademarks, domain names or products using the term “m31” provide very limited support for its contentions that this term has become diluted in the marketplace and no one should have the exclusive rights over it. On the contrary, the Presiding Panelist consider the term “m31” distinctive in relation to financial or investment services. The evidence provided by the Respondent show a list of only six United States trademark registrations (with no indication of their respective classes of goods or services), four extracts of websites (none in the financial or investment sector, three technological businesses and one in the real estate), and a promotional extract of the Samsung Galaxy M31 smartphone (most known by the name “Samsung Galaxy” and unrelated to investment services).

The Presiding Panelist further notes that the Respondent website’s look and feel or general impression is similar to the Complainant’s website (apart from its landing page), both having a similar color combination, structure and design, and similar visual effects, for example, having their sections underlined in dark red when choosing each section. These circumstances might likewise initially appear to be more than a chance occurrence, and it therefore calls for an explanation from the Respondent. The Presiding Panelist accepts the Respondent’s contentions regarding other aspects in its website that differ from the Complainant’s site, like the different logo or stylized version of the M31 mark used, and the different landing page, albeit there is still an issue here for the Respondent’s case in that both the color scheme and general appearance is similar. However, the Presiding Panelist considers this aspect may not, on its own, prove on the balance of probabilities that the Respondent was aware of and seeking to borrow from the Complainant’s mark despite the apparent similarity, as the specific similarities in the Parties’ websites may be rather common features in other businesses’ websites, not showing a particularly high level of creativity.

The Presiding Panelist considers that the Respondent’s appears to be on firmer ground when it asserts that the Complainant had no apparent trading activity in the United States (other than having filed and registered its trademark) when it registered the disputed domain name, as the Complainant’s fund (“M31 Navigator Fund LP”) complied with the United States Securities and Exchange Commission notification on February 3, 2020 (5 months after the registration of the disputed domain name). The Presiding Panelist further notes that the registration of the Complainant’s trademark in the United States only predates 6 months the establishment of the Respondent’s business, and 4 months the registration of the disputed domain name. However, the fact that the Complainant had no presence in the United States before the registration of the disputed domain name is not necessarily conclusive of the question of the Respondent’s potential knowledge or intent to target it, particularly as the Respondent is in the same line of business, and the Complainant had an active website before the registration of the disputed domain name. According to the Complainant’s allegations and evidence, its business started in 2018 (one year before the registration of the disputed domain name), and its corporate website was launched in 2019, being the first extract provided of this site dated January 30, 2019 (about 8 months before the registration of the disputed domain name).

The Presiding Panelist further notes that the Respondent’s website provides its content, among other languages, in Chinese, and includes, since its launch, a reference to the same city were the Complainant is based (Shanghai, China), which may point to a possible knowledge of the Complainant and an aim to promote the Respondent’s business in China profiting from the Complainant’s prior rights. However, the Respondent’s explanations about not having a real establishment or employees in Shanghai, China, but simply a net of external analysts of the crypto industry, one of them located in this city, seem consistent with the Respondent’s website content and its lack of indication of any address or company established in China.

The Presiding Panelist considers that the mere fact of addressing to the Chinese market may not, on its own, prove on the balance of probabilities that the Respondent was aware of and seeking to borrow from the Complainant’s prior rights; albeit there may be an issue here for the Respondent’s case if the notoriety of the Complainant’s mark (at the time of the registration of the disputed domain name) may be established.

However, the Presiding Panelist considers that the evidence provided by the Complainant regarding the notorious character of its trademark in the United States at the time when the disputed domain name was registered (in September 2019) is insufficient, and it is even insufficient to determine whether its trademark was notorious in China at that time. Only two of the evidences provided by the Complainant are dated prior to the registration of the disputed domain name, one related to a conference about innovators in Asia (not the United States), the other is a YouTube interview with only less than 300 views, and the awards received in China are from 2020.

The Presiding Panelist has further performed some limited independent research over the Internet under its general powers articulated, inter alia, in paragraph 10 of the Rules, corroborating that the Respondent’s business seems to be legal and it apparently have (now) more presence over the Internet than the Complainant and its business. The record thus appears to be supportive of the Respondent’s insistence that it probably did not select its trading name to benefit from the Complainant’s goodwill; the Presiding Panelist notes here that this proceeding is not geared towards evidentiary discovery or cross-examination, and the burden (“more likely than not”) falls upon the Complainant.

In conclusion, the Presiding Panelist considers that this is a complex dispute, where the evidence and arguments of both Parties are not conclusive. While there is an identity between the disputed domain name and the Complainant’s trademark and domain name, and some factors in this case may seem more than coincidental pointing to a possible target of the Complainant and its prior intellectual property rights, other factors may point to consider that the Respondent independently chose the name “M31 Capital” for its business with no intention of taking advantage of the Complainant’s prior rights. Particularly, considering that the Complainant’s rights predate only in 1 year the registration of the disputed domain name, the Complainant’s corporate website launch predates only about 8 months the registration of the disputed domain name, and no evidence shows that the Complainant was known in September 2019 (even in China).

Furthermore, the Presiding Panelist considers that this administrative proceeding itself may be incidental to a much broader intellectual property or unfair competition dispute between what appear to be two businesses established in different jurisdictions (although aiming to a global scope of potential clients), with alleged competing legitimate interests.

For these reasons, the Presiding Panelist considers that this case exceeds the relatively limited “cybersquatting” scope of the Policy and would be more appropriately addressed by a court of competent jurisdiction. The written submissions procedure provided under the Policy is not best suited to resolving this case, and the Parties would find other more suitable remedies, which may be available to them. For example, in the competent jurisdiction Courts, providing them, with an opportunity to conduct a fuller inquiry into the facts and circumstances of this matter, with the benefit of discovery procedures, oral testimony, and cross-examination. See section 4.14.6, WIPO Overview 3.0.

The Presiding Panelist therefore finds that the Complaint should be denied without entering into a decision on its merits, emphasizing that it makes no finding as to whether the Respondent’s conduct is legitimate under the Policy.

7. Decision

For the foregoing reasons, and for the reasons in the concurring decision, by majority decision the Complaint is denied.

Reyes Campello Estebaranz
Presiding Panelist

Gary J. Nelson
Panelist

Dr. Hong Xue
Panelist

Date: October 10, 2021
CONCURRING BUT SEPARATE OPINION

Panelist Gary J. Nelson agrees with the ultimate decision to deny the Complaint and respectfully submits a Concurring Opinion in the above captioned proceeding.

Factual Background; Parties’ Contentions; Unsolicited Filings By The Parties

Panelist Nelson is in agreement with the Presiding Panelist’s summary of the Factual Background. Panelist Nelson is also in agreement with the presentation of the Parties’ Contentions, as summarized by the Presiding Panelist. And Panelist Nelson agrees with the Presiding Panelist’s holding that all unsolicited filings made by either Party should not be considered.

A. Identical or Confusingly Similar

Panelist Nelson agrees with the Presiding Panelist’s holding that the Complainant has established trademark rights in the M31 trademark, and that the disputed domain name is identical or confusingly similar to the Complainant’s M31 trademark.

B. Rights or Legitimate Interests

While the Presiding Panelist’s decision and written opinion denies the Complaint, it is noted the Presiding Panelist refrained from directly addressing the issue of whether the Respondent had established rights or a legitimate interest in the disputed domain name. Panelist Nelson believes it is appropriate to address this matter on the merits.
1. The Respondent Has Failed To Establish Nathan Montone Is Commonly Known By The Disputed Domain Name.

Under Policy 4(c)(ii), a respondent may avoid an adverse holding on this element of the Policy if the Respondent has been commonly known by the domain name. See section 2.3, WIPO Overview 3.0. In defending against the case presented by the Complainant, Respondent repeatedly alleges that the working definition of “Respondent” for this dispute should be a combination of himself, an individual named Nathan Montone, and M31 Capital Management LLC, a legal entity for which he claims to be the Chief Executive Officer (CEO). This attempt to inappropriately expand the definition of “Respondent” to include a legal entity that does not own the disputed domain name must fail. There is only one owner of the disputed domain name and that owner is Nathan Montone. Accordingly, Nathan Montone is the one and only Respondent in this case.

The Respondent does not provide any evidence that Nathan Montone, in his individual capacity, is commonly known by the disputed domain name. See Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Fay Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073 (finding that respondent was not commonly known by the domain name <themahjonggmaven.com> even though the respondent was in the business of selling products commonly referred to as Mah Jong games and accessories).

In this case, while the Respondent’s M31 Capital Management company may very well be commonly known by the disputed domain name, the Respondent has failed to prove that Nathan Montone is commonly known by the disputed domain name.
2. Respondent Is Using The Disputed Domain Name In Connection With A Bona fide Offering of Services.

Under Policy 4(c)(i), a respondent may avoid an adverse holding on this element of the Policy if the Respondent can successfully prove that his use of the disputed domain name is in connection with a bona fide offering of goods or services. See section 2.2 WIPO Overview 3.0. In this case, and as previously mentioned, the Respondent claims to be the CEO of M31 Capital Management LLC, which operates the website at the disputed domain name. Declaration of the Respondent further claims that M31 Capital Management has operated under the business names M31 and M31 Capital since at least as early as September 19, 2019. This claim that his M31 Capital Management company was up and running prior to receiving notice of this dispute is not contradicted by any evidence provided by the Complainant, despite the Complainant’s multiple and repeated allegations to the contrary. See Etro S.p.A. v. Hernan Villalobos, WIPO Case No. D2014-0264 (denying the Complaint when the Respondent, as an individual named Hernan Villalobos, sufficiently established he was operating a night club/lounge type business under the name Etro Lounge where the disputed domain name was <etrolounge.com>).

Because the Respondent claims his M31 Capital Management company was up and running as a legitimate business beginning nearly two years prior to receiving notice of this pending dispute, and because the Respondent has provided actual evidence in support of this claim, and because the Complainant has not provided any actual evidence that contradicts the Respondent’s claim that his M31 Capital Management company is anything but a legitimate business, Panelist Nelson finds the Respondent is responsible for the use of the disputed domain name in connection with a bona fide offering of investment services. This is sufficient to defeat the Complaint filed against the Respondent.
C. Bad Faith

Paragraph 4(a)(iii) of the Policy states unequivocally that the Complainant has the burden to prove that the disputed domain name has been registered and is being used in bad faith. In this case, the Complainant relies almost exclusively on repeated allegations and attorney argument and fails to provide sufficient evidence to support its position on the issue of bad faith. Therefore, Panelists Nelson finds that the Complainant has failed to prove that that the domain name was registered and is being used in bad faith.
1. The Complainant Fails To Provide Evidence Showing Respondent Knew About The Complainant And The Complainant’s Marks.

The Complainant fails to provide any evidence that the Respondent had actual knowledge of the Complainant and the Complainant’s marks at the time the Respondent registered the disputed domain name. Rather, the Complainant alleges that it obtained its own registration for its <m31capital.com> domain name and used it before the Respondent registered the disputed domain name. The Complainant goes on to make numerous general allegations that the “Complainant’s Trade Marks and domain name <m31capital.com> had also become widely-known among investors and relevant public as a result of long-term promotion and use” and that “Respondent must have had prior knowledge of Complainant’s Trade Mark as well as registration and use of <m31capital.com> before registration of the disputed domain name on September 20, 2019.”

The Complainant does provide some evidence of recognition by third party sources in China. The Complainant also provides some evidence of additional third party recognition within the financial investment industry extending beyond the borders of China. However, this evidence does not support the Complainant’s allegation that it was so famous or well known within the global financial investment community that any other operating investment firm would have necessarily been aware of its name, trademarks and operations. In fact, the Complainant expressly alleges that the Complainant and the Respondent had no prior connection prior to the initiation of this dispute.

Unlike the Complainant, the Respondent submitted at least some evidence supporting his claim that he did not have actual knowledge of the Complainant or the Complainant’s marks at the time he registered the disputed domain name. Specifically, the Respondent submitted a declaration in which he stated that “[a]t the time I elected to register the m31.capital domain name, I was unaware of M31 Management as a company or whether it did business in the United States. Hence, I did not register the domain name to undermine M31 Management’s business.” Additionally, the Respondent stated that he first learned of the Complainant when he was served with the Complaint in this proceeding. This allegation by the Respondent is not contradicted by any evidence provided by the Complainant.

At best, the Complainant’s factually unsupported allegations suggest that the Respondent may have had constructive notice of the Complainant and the Complainant’s marks by virtue of the fact Complainant owns a United States Trademark Registration for the M31 mark covering financial investment services. However, as a general rule, UDRP panels are reluctant to find that a the Respondent had constructive notice of the Complainant’s mark when registering a domain name. See The Fragrance Foundation Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982 (stating that UDRP panels are reluctant to find that respondent had constructive notice, even though constructive notice can be found “…when the trademark is already publicly registered in the country where the parties are located prior to domain name registration”). The finding of constructive notice of a complainant by a respondent, based solely on the existence of a trademark registration, has only been applied in limited circumstances where both parties are located in the same country, and this finding is usually limited to the United States. See section 3.2.2, WIPO Overview 3.0. However, the clear majority of UDRP Panels have refrained from introducing the United States concept of constructive notice into their UDRP analysis. See Gamberoso Rosso Holding S.p.A. v. CDN Properties Incorporated, WIPO Case No. D2014-1349 (holding that Complainant’s constructive notice allegations were insufficient for a finding that the disputed domain name was registered and used in bad faith).

Here, those limited circumstances do not appear to be present because the Complainant is based in China (Shanghai and Beijing), and appears to have a limited presence in the United States, if any. The Respondent is located in the United States. Moreover, even if constructive notice of the Complainant were to be assigned to the Respondent, constructive notice is an entirely different concept from constructive bad faith. Panelist Nelson declines to extend potential constructive notice into a finding of constructive bad faith registration and use.

The Complainant also cites to the alleged similarity of the Parties’ websites as evidence the Respondent must have known of the Complainant at the time the Respondent registered the disputed domain name providing in the Supplement to Complaint a direct comparison between the Complainant’s and the Respondent’s websites. This allegation by the Complainant is not convincing. The side by side comparison submitted by the Complainant does not support its position. Rather, after comparing the Parties’ websites, as presented by the Complainant, Panelist Nelson must conclude the respective parties’ websites are not sufficiently similar to imply copying by the Respondent. Specifically, the Complainant states that the Respondent’s website provides a “Log In” page for potential investors that functions similarly to the private login feature on the Complainant’s official website at <m31capital.com>. However, “Log in” pages are common on websites and Respondent’s use of a “Log In” page is not evidence that the Respondent was aware of the Complainant or the Complainant’s website. Therefore, the Complainant has failed to prove that Respondent had sufficient knowledge of the Complainant to support a finding of bad faith registration and use.
2. The Complainant Fails To Provide Evidence Showing Respondent Is Disrupting The Business Of A Competitor.

The Complainant alleges that the Respondent is attempting to disrupt the business of a competitor. However, once again, the Complainant fails to provide any actual evidence that the Respondent competes directly with the Complainant.

The Complainant alleges that it “provides securities investment services to their global investors” and “invests in high quality growth stage companies primarily in China with global perspective.” The Complainant also relies upon general, unsupported allegations that “Respondent is capitalizing on confusion and competing for online traffic destined for the Complainant” and that the Respondent “appears to be promoting and/or offering investment services strikingly similar to those offered by the Complainant.”

The Respondent, on the other hand, submits actual evidence supporting his claim that the services offered by his companies do not compete directly with Complainant’s services. In his declaration, the Respondent states that he believes the Respondent and the Complainant are not competitors. The Respondent states that its company focuses exclusively on blockchain technology and digital assets, while the Complainant appears to offer direct investment opportunities in specific Chinese companies.

Moreover, the Complainant does not contest the Respondent’s allegation that the Respondent limits its financial services to investment opportunities that focus exclusively on crypto currency and blockchain technology. The Complainant does not contest the Respondent’s allegation that the Complainant does not offer these type of financial investment services and opportunities.

Accordingly, both Parties appear to concede that there is no direct overlap between the respective financial investment opportunities offered by the Parties. See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (holding that the complainant failed to prove that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor because “[a] respondent can “disrupt[] the business of a competitor” only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.”).

Therefore, the Complainant fails to sufficiently support its allegation that the Respondent is disrupting the business of a competitor, or that the Respondent was attempting to disrupt the business of a competitor when the Respondent registered the disputed domain name.
3. The Respondent Appears To Be Operating A Legitimate Business.

The Respondent alleges he is in charge of legitimate companies using the M31 trademark in the financial investment industry focusing on crypto currencies and blockchain technologies. The Complainant does not provide any actual evidence to the contrary. Indeed, the Complainant does not allege the businesses controlled by the Respondent are not legitimate companies offering legitimate financial investment opportunities.
4. A Trademark Infringer Is Not Necessarily Using The Complainant’s Trademark In Bad Faith.

The Complainant alleges the Respondent is infringing its M31 trademark. While the Respondent denies this allegation, the Complainant’s allegation of trademark infringement may very well be accurate. However, the complex issue of trademark infringement between two parties operating what appear to be legitimate businesses is not a dispute the UDRP Policy is designed to squarely address, and may very well be outside the scope of the UDRP Policy. On this point, this Panelist is in agreement with the Presiding Panelist.

Moreover, it is possible the Respondent could ultimately be found to be liable in a trademark infringement court action even if the Complainant cannot prove the Respondent is acting in bad faith. In this case, however, bad faith must be established before we can rule in favor of the Complainant. Even if the Complainant fails to prove the Respondent registered and is using the disputed domain name in bad faith, the Complainant can always file a trademark infringement action in a competent court in an appropriate jurisdiction. The filing of a UDRP Complaint is not the only venue the Complainant has available to address its grievances.

In summary, Panelist Nelson concludes the Complainant has failed to prove the disputed domain name was registered and is being used by the Respondent in bad faith.

As such, Panelist Nelson joins with the Presiding Panelist on the ultimate decision to deny the Complaint for the reasons stated in this Concurring Opinion.

Gary J. Nelson
Panelist
Date: October 10, 2021
DISSENTING OPINION

Panelist Hong Xue respectfully disagrees with the decision of the Panel and submits the following Dissenting Opinion under paragraph 15 of the Rules.
A. Identical or Confusingly Similar

With respect to the first elements in paragraph 4(a) of the Policy, Panelist Xue view concurs with the Presiding Panelist’s conclusion that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark M31.
B. Rights or Legitimate Interests

Paragraph 4(c)(i) of the Policy provides that before any notice to the Respondent of the dispute, the Respondent’s use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services can be the proof of the Respondent’s rights or legitimate interests in a disputed domain name.

Panelist Xue view agrees with the learned Panelist Nelson that the use of the disputed domain name in connection with offering of service by a third-party company named “M31 Capital Management LLC” in which the Respondent acts as the founder and CEO can be deemed as the Respondent’s use. Although no proof of the agreement regarding the use of the disputed domain name between the Respondent and this company is available to the Panel, the Respondent can be presumed to have authorized this company to use the disputed domain name in business. It’s also clear that the Respondent has authorized the third-party company to use the disputed domain name before the notice of this dispute.

Panelist Xue view, however, finds that the Respondent’s (authorized) use of the disputed domain name is not in good faith in China where the Complainant resides and operates. Although the disputed domain name being used for commercial purpose in the global space, its website offers the service especially to a few targeted markets, one of which is apparently China. It states on the page of “About” of the website that “M31 Capital is a global investment firm focused exclusively on crypto assets and blockchain technology. We deploy capital on behalf of investors around the world through an active network participation strategy managed by our globally decentralized team”; a world map highlighting New York, San Francisco, Shanghai and Seoul follows the above-mentioned statement. On the page of “Contact”, it states that “M31 Capital has operations around the world and a globally decentralized team managing several crypto asset investment products with different strategies and risk profiles”; New York, San Francisco, Shanghai and Seoul are listed below the contact email address on the same page.

Panelist Xue view finds that the foregoing information on the website of the disputed domain name discloses that Shanghai, China, is not only highlighted in the Respondent’s business map but confirmed as one of the cities where the Respondent’s service operates. The Respondent’s repudiation about no operation in China and not “making any marketing or promotion in this country” is not consistent with the publicly-accessible descriptions about the service offered through the website. Given that the website specifically contains a version in Chinese language, the Respondent’s service apparently intends to appeal to the Chinese investors. As stated on the website, the Respondent’s service is offered to the investors through “an active network participation strategy managed by our globally decentralized team”. Even though the Respondent may not have physical existence in China due to the regulatory restrictions, the Respondent’s website does promote the service and may have solicit the investors in China especially through the Chinese-language webpages.

The disputed domain name was registered on September 20, 2019. As stated by the Respondent, the company “M31 Capital Management LLC” was registered in January 27, 2020, and the website of the disputed domain name was published in 2020, the content of which has not substantially changed since its initial launch.

Panelist Xue view appreciates the learned Presiding Panelist’s findings that “M31” is a mark distinctive, not generic in relation to financial or investment services. The Complainant proves that it adopted M31 as the trade name from 2016 and has been using the mark for its consultancy and investment services, although the Complainant obtained the Chinese trademark registration over M31 not until October 7, 2019. In 2020, the Complainant received the awards (such as Top 10 China’s Emerging Venture Capital Institutions, etc.), which is the solid proof of its business operation and market reputation in China before 2020. It can be found that, prior to the Respondent’s registration and use of the disputed domain name, the Complainant has already substantively used the mark M31 in its investment services and become reputable to the relevant public in China. Although the Respondent offers the investment service focusing exclusively on crypto assets and blockchain technology, it is entirely unconvincing that the Respondent began to offer the professional investment services in Chinese market without exercising any due diligence even in the same field of business, less the Respondent concedes that it has the sole “analysts based in Shanghai, China”.

Based on the evidence available to the Panel, Panelist Xue view finds that the Respondent’s offering the investment service through the website of the disputed domain name with the knowledge of the Complainant’s prior-existing mark M31 is not evidence of bona fide under paragraph 4(c)(i) of the Policy.

Neither the Respondent provides any proof with respect to paragraph 4(c)(ii) and (iii) of the Policy.

Panelist Xue view, therefore, concludes that the Complainant has successfully made a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name, which is not rebutted by the Respondent.
C. Bad Faith

Apart from the foregoing discoveries, the disputed domain name registration process can also prove the Respondent’s knowledge of the Complainant’s mark M31 before registering the disputed domain name. The disputed domain name was registered under the new gTLD “.capital”, rather than any of the legacy gTLD:s (such as “.com”, “.net”, “.org” etc.). Although resolution and usage of the new gTLDs on the Internet have been significantly improved since ICANN approved them one by one from 2013, there has still been the issue of universal acceptance (“UA”) that hinders Internet users from accessing the domain names under the new gTLDs from any web browser, email client, or other Internet application on any computer or electronic device. The new gTLDs are, therefore, not the first choice of domain name registration. Before choosing the alternate disputed domain name, the Respondent should have known that <m31capital.com> had been registered. Running a business “exclusively on crypto assets and blockchain technology”, the Respondent should have the sufficient knowledge on the Internet technologies. Given that a simple WhoIs search can enable the Respondent to discover that <m31capital.com> has been registered by the Complainant, the Respondent’s choice of registering the disputed domain name notwithstanding of the Complainant’s preexisting domain name and associated mark proves the Respondent’s bad faith. A respondent who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness. See section 3.2.3, WIPO Overview 3.0.

The Respondent’s knowingly use of the disputed domain name that is confusingly similar to the Complainant’s mark for the website offering the investment services similar to the Complainant’s is highly likely to cause the initial confusion to the Chinese investors with the Complainant’s mark regarding the source, sponsorship, affiliation, or endorsement of the Respondent’s website and service, which is the evidence of bad faith under paragraph 4(b)(iv) of the Policy.

According to the Chinese administrative regulations,3 information intermediate and platform services for cryptocurrencies had been banned from operation since September 2017. Given that the business operation of the Respondent’s website may be subject to the regulatory actions in China, the website’s likelihood of confusion with the Complainant’s mark is highly detrimental to the Complainant’s business.

In summary, Panelist Xue view finds that the disputed domain name was registered and is being used in bad faith.

In conclusion, since the Complaint meets all three elements required in paragraph 4(a) of the Policy, Panelist Xue view believes that the disputed domain name be transfer to the Complainant.

Dr. Hong Xue
Panelist
Date: October 10, 2021

1 The Complainant owns the domain names <m31management.com>, <m31investment.com>, and <m31partnership.com> (registered on March 29, 2018), as well as <m31group.com> (registered on April 2, 2018), which are inactive.

2 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a 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.

3 See the Circular on Prevention of Financial Risks of Cryptocurrency Distribution jointly issued by the Chinese Central Bank and other authorities on September 4, 2017.


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Comments

One Response to “M31.Capital won over M31Capital.com”
  1. amplify says:

    It’s not every day that we see a trademark not being used in bad faith. Quite the opposite!

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