The Optimism Foundation is a Cayman Islands company involved in the building, development, and running of software applications on the blockchain. They operate from the domain name Optimism.io.
They filed a UDRP to usurp the domain www-optimism.com, which appears strange as that domain clearly targets Optimism.com which they don’t operate from. The company filed a trademark application in 2021 to register the mark OPTIMISM with the USPTO. That application is still in process.
The Forum (NAF) panelist declined to find bad faith use in the domain’s registration, citing that the Complainant did not provide proof of their mark’s acquisition of a secondary meaning through use in commerce.
Final decision: Deny transfer of www-optimism.com to the Complainant.
The domain transfer was denied.
The Optimism Foundation v. FAleksei Nguen
Claim Number: FA2302002030643
PARTIESComplainant is The Optimism Foundation (“Complainant”), represented by Matthew Passmore of Cobalt LLP, California. Respondent is FAleksei Nguen (“Respondent”), RU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is www-optimism.com, registered with Registrar of Domain Names REG.RU LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 6, 2023; Forum received payment on February 6, 2023.
On February 7, 2023, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the www-optimism.com domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2023, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@www-optimism.com. Also on February 13, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from the Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian.
Complainant contends Respondent’s website available at the disputed domain name uses English characters and words, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Russian language and would require delay and unnecessary costs to translate the document.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, The Optimism Foundation, operates in building, development, and running of software applications on the blockchain. Complainant claims common law rights in the OPTIMISM mark. The disputed domain name www-optimism.com is identical or confusingly similar because it wholly incorporates Complainant’s mark differing only through the additions of “www” and a dash as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OPTIMISM mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domains to pass off as Complainant.
Respondent registered and uses the disputed domain in bad faith. Respondent uses the disputed domain name to pass off as Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights in the OPTIMISM mark prior to registration of the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is The Optimism Foundation (“Complainant”), of Georgetown, Grand Cayman, Cayman Islands. Complainant appears to have registered the optimism.io domain name in or about 2015 and began using the OPTIMISM mark in commerce in 2019. Complainant filed a USA trademark application for the word mark OPTIMISM in 2021. No USA trademark registration is identified nor is there a trademark registration from any other nation state indicated. Complainant relies on asserted widespread use and recognition in a niche field as proof of common law rights to the mark OPTIMISM.
Respondent is FAleksei Nguen (“Respondent”), of Chita, Russia. Respondent’s registrar’s address is unlisted, and Respondent did not answer the complaint. The Panel notes that the disputed domain name was registered on or about November 21, 2022.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant claims common law rights in the OPTIMISM mark. Previous panels have found a complainant may have rights in a mark if they can demonstrate common law rights. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). The Panel here finds that Complainant need not provide evidence of a trademark registration to show rights in the OPTIMISM mark.
Complainant has used the mark since at least as early 2019 and Complainant alleges that its mark has become associated with open-source access to Ethereum. Common law rights in a mark may be established through evidence that the mark has acquired secondary meaning. See also Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate length of use and amount of sales under the mark, the nature and extent of advertising, and consumer association through surveys and media recognition. See also Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004, of Complainant’s own website 745cash.com. Complainant also urges that its business phone number is 745-CASH.).
Complainant provides almost none of the specific above referenced evidence in its pleadings. Complainant does indicate that his domain name was registered in 2021 as opposed to Respondent’s in 2022 but that alone does not indicate secondary meaning. Complainant’s domain name was registered under the .io top level domain which indicates the country code for British Indian Ocean Territory, which is not where the Complainant is located. While country code top level domains are not limited to users in the particular designated country, and the Cayman Islands is a British Territory, albeit in the Caribbean Sea, Complainant definitely had time from its 2015 registration to generate public association with the generic term “optimism” for purposes of successful trademark application in some jurisdiction or additional domain name registrations. However, Complainant did not begin to use the mark in commerce until 2019. The Panel recognizes that .io is popular with some tech enthusiasts, which may further explain in part Complainant’s choice of that top level domain, but that does not explain why no further steps were taken to protect the secondary level domain “optimism” as Complainant’s mark. No USA trademark registration has issued and while no specifics are provided, it is just as likely due to “optimism” being a generic term or merely descriptive without proof of secondary meaning.
While Complainant further argues that its marketing campaign in association with the OPTIMISM mark establishes further evidence of their common law rights in the mark no specifics of the marketing campaign are given beyond annexes showing the alleged mark being used in or on a couple of ads. Nothing has been provided to indicate the public generally associates the word mark “OPTIMISM” with Complainant. The Panel here finds that Complainant has failed to show that it has common law rights in the OPTIMISM mark per Policy ¶ 4(a)(i).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Complainant has NOT proven this element.
Rights or Legitimate Interests
The Panel declines to analyze this element as all three elements cannot be satisfied.
Registration and Use in Bad Faith
The Panel declines to analyze this element as all three elements cannot be satisfied.
DECISION
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the www-optimism.com domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: March 26, 2023
