CANADIAN INTERNATIONAL INTERNET DISPUTE RESOLUTION CENTRE

DOMAIN NAME DISPUTE
ADMINISTRATIVE PANEL
DECISION

CIIDRC case number: 17470-UDRP
Decision date: June 29, 2022
Domain Name: cyberianmine.net (the “Disputed Domain Name”)
Panel: Douglas M. Isenberg, Esq.
Complainant: Cyberian Mine GmbH
Complainant’s Counsel Zak Muscovitch
Respondent: Ilo Chidera
Registrar: NameCheap Inc.

1. PROCEDURAL HISTORY
The procedural history of this proceeding, according to the Centre, is as follows:

  1. On May 26, 2022, Mr. Muscovitch filed a Complaint on behalf of Cyberian Mine GmbH, the Complainant, pursuant to the UDRP and the UDRP Rules. The Complaint was submitted via email.
  2. The identity of the Registrant is not published in the public WHOIS database; therefore, the Registrant’s name was not included in the Complaint.
  3. On May 26, 2022, the Registrar of the disputed domain name, NameCheap Inc., was notified of this proceeding.
  4. On May 26, 2022, the Registrar transmitted by email to CIIDRC its verification response informing who is the Registrant, Respondent, in this administrative proceeding. The Registrar also confirmed that the <cyberianmine.net> domain was placed on a Registrar LOCK.
  5. On May 26, 2022, CIIDRC, as Service Provider, confirmed compliance of the Complaint with UDRP Rules and commencement of the dispute resolution process.
  6. Pursuant to UDRP Rule 4 and Supplemental Rule 5, CIIDRC notified the Respondent of this administrative proceeding and forwarded the Complaint on May 26, 2022. Since the mailing address listed in the Registrar's registration record is invalid, the Complaint was sent to the
    Respondent by email only.
  7. The Respondent failed to file its response by the due date of June 15, 2022.
  8. The Complainant in this administrative proceeding has elected for a Panel consisting of a single member.
  9. CIIDRC appointed Douglas M. Isenberg, Esq., as a single-member Panel on June 16, 2022.

2. FACTS ALLEGED BY THE PARTIES

Complainant contends that it is “a cryptocurrency mining company that “maintains a facility which provides vast racks of computer hardware that generate or ‘mine’ cryptocurrency”; that its “cryptocurrency mining operations are located in Siberia which provides a uniquely favourable environment due to Siberia’s low electricity costs and free natural cooling from the cold environment”; that it “launched its online web presence on or about May 12, 2018”; and that it uses the domain name <cyberianmine.de>.

The Disputed Domain Name was created on May 15, 2021, and has been used in connection with a website that, according to Complainant, “mimics the Complainant’s website and reproduces the Complainant’s content,” including “a ‘Login’ feature which is intended to elicit a visitor’s login and password credentials” that can “be used to attempt various frauds against customers of the Complainant who unwittingly visit the Respondent’s website in error, believing it to be the Complainants.”

3. CONTENTIONS OF THE PARTIES

  • Complainant

Complainant contends, in relevant part, as follows:

Complainant has common law rights in and to the trademark CYBERIAN MINE because Complainant has used the domain name <cyberianmine.de> since at least May 12, 2018; Complainant has “received considerable public recognition in respect of its unique cryptocurrency mining operations,” including in six media articles provided by Complainant; “Complainant has published numerous articles about cryptocurrency mining on the wellknown publishing platform, Medium,” including four articles provided by Complainant;

“Complainant has since 2018, established and maintained a social media presence on Facebook, LinkedIn, Telegram, and Twitter”; and “Complainant has attended numerous industry conferences and events where it has sent representatives to speak, to operate an informational booth, to advertise and promote, and/or to network amongst other industry players,” including five conferences identified by Complainant.

Respondent has no rights or legitimate interests in respect of the Domain Name because, inter alia, “Respondent has not been commonly known as CYBERIAN MINE or by the Domain Name prior to the Respondent’s registration of the disputed Domain Name”; and “Respondent obviously knew of the existence of the Complainant’s mark and that is precisely why he registered it for his fraudulent phishing scheme.”

The Domain Name was registered and is being used in bad faith because, inter alia, because “Respondent specifically sought out to register and use the Domain Name in bad faith as part of an overtly fraudulent phishing scheme”; “[w]here a respondent passes itself off as an “official” website of the complainant mark owner, bad faith registration and use may be found”; “[s]se of the Complainant’s copyrighted images including images wherein the Complainant’s trademarks are prominently displayed to further confuse users in combination with other acts of passing off, constitutes evidence of bad faith registration and use”; and “Respondent has engaged in a pattern of cybersquatting in circumstances similar to this,” including Northern Data AG v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Ilo Chidera, WIPO Case No. D2021-1884, and Bilfinger SE v. Ilo Chidera / Maxtyga Services, Forum Claim No. 1985721.

  • Respondent

Respondent did not reply to Complainant’s contentions.

  • Remedy Sought

Complainant requests that the Panel issue a decision that the Disputed Domain Name registration be transferred to Complainant.

4. DISCUSSION AND FINDINGS

4.1 Requirements

In accordance with Paragraph 4 of the Policy, the onus is on the Complainant to prove:
1) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
2) That the Respondent has no rights or legitimate interests in the Domain Name; and
3) That the Domain Name has been registered and is being used in bad faith.

To consider each of these requirements in turn.

4.2 Analysis

4.2.1 That the Domain Name is Identical or Confusingly Similar to a Mark in which the Complainant has Rights

As set forth in section 1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Complainant has provided some evidence of such acquired distinctiveness, although it is difficult for the Panel to assess the strength of such evidence. Nevertheless, section 1.3 of WIPO Overview 3.0 makes clear that “the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.” And, perhaps even more significantly, the same section says: “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is

As to whether the Disputed Domain Name is identical or confusingly similar to the CYBERIAN MINE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “cyberianmine”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1.

The Disputed Domain Name contains the CYBERIAN MINE Trademark in its entirety (absent the space, which is not a permissible character in a domain name). As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, “it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to” the trademark, Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027, because in such case “[t]he disputed domain name is obviously identical to the Complainant’s mark.” Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823. Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

4.2.2 That the Respondent has No Rights or Legitimate Interest in the Domain Name

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Domain Name because, inter alia, “Respondent has not been commonly known as CYBERIAN MINE or by the Domain Name prior to the Respondent’s registration of the disputed Domain Name”; and “Respondent obviously knew of the existence of the Complainant’s mark and that is precisely why he registered it for his fraudulent phishing scheme.”

WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

4.2.3 That the Respondent has Registered and Used the Domain Name in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

The Panel finds that use of the Disputed Domain Name by Respondent in connection with a website that impersonates Complainant creates a likelihood of confusion under paragraph 4(b)(iv) of the Policy and that publishing a login link that may be used to obtain usernames and passwords from unsuspecting Internet users is evidence of bad faith. WIPO Overview 3.0, section 3.1.4 (“the use of a domain name for per se illegitimate activity such as… phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”). Although it is unclear whether Respondent is currently engaged in actual acts of collecting usernames and passwords with the Disputed Domain Name, “Complainant need not ‘wait for some future use of the disputed domain name[] to occur in order to demonstrate Respondent’s bad faith use…. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.’” CareerBuilder, LLC v. Finity Development Group, WIPO Case No. D2006-0615.

Finally, as stated above, Complainant has identified at least two previous decisions under the Policy against Respondent. As a result, Respondent has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy because he has engaged in “a pattern of such conduct.” See, e.g., LinkedIn Corporation v. David Naranjo, All Play Media, WIPO Case No. D2019-2784 (“Respondent has engaged in an abusive pattern of registration of [two] domain names targeting Complainant’s… Trademark, such conduct amounting to bad faith registration pursuant to paragraph 4(b)(ii) of the Policy”); and Inter-Continental Hotels Corporation v. James Alex, Design Factory, WIPO Case No. D2010-0974 (finding bad faith where complainant alleged that “two domain names… indicate[] a ‘pattern’ of conduct by Respondent”) (emphasis added).

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

5 DECISION and ORDER

For the above reasons, in accordance with Paragraph 4 of the Policy, Paragraph 15 of the Rules, and Rule 10 of the Supplemental Rules, the Panel orders that the disputed domain name <cyberianmine.net> be transferred to Complainant.

Made as of June 29, 2022.
SIGNATURE OF PANEL