I guess Chia Network is serious about Trademark action against Chia Forks using the word Chia, because they have just completed the ICANN Uniform Domain Name Dispute Resolution Process with the DogeChia domain owner, and they have prevailed. DogeChia will have to hand over their dogechia.org domain name by October 16th.
I am not surprised that Chia Network was able to win here, as they clearly do hold the trademarks on the word CHIA as it relates to cryptocurrency. But in order to exercise the UDRP they have to show that DogeChia had registered the domain in bad faith. According to ICANN, a bad faith registration is:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.ICANN UDRP Process
In their complaint, Chia Network argues that clauses 3 and 4 apply, that DogeChia registered the domain to disrupt Chia Network’s business or to attempt to entice users from Chia to DogeChia with a likelihood of confusion. It looks like the prevailing clause was 3.
I have reached out to Chia Network about whether they believe DogeChia to have been acting in “bad faith” and if they believe that DogeChia’s website was similar enough to create confusion. To the first question, as it is a term of art they are going to get back to me on their reasoning if there is more than present in the complaint. And as to the second, J Eckert had this to say.
We think there was sufficient potential for confusion in our own eyes, due to the combinations of leveraging a fork of our code, and our name, and some dubious claims in a few places… at least sufficient enough potential to a layman that we asked experts on deciding if there really is or not (the panel) to intercede and make an expert judgement call for us on itJ Eckert, VP Ecosystem Operations Chia Network Inc
I will let you determine what the truth is, the DogeChia.org website is here. Until the 16th at least.
I did speak to the owner of the DogeChia domain about this issue, and he has provided me with a ton of information about the process. I will be reviewing this and providing my personal thoughts on the subject later today or tomorrow.
In speaking to him, I am personally convinced that he was not operating in bad faith as a colloquial sense. He was not trying to deceive anyone, and if he infringed Chia Network’s trademarks it was not his intent. I want to make it clear because it is easy to be labelled as a “bad faith actor” in the cryptocurrency space, and this individual may have made a mistake or error in judgement, but he showed up and defended his decisions. He participated in the process and was genuinely convinced that Gene’s comments about usage of the trademark would vindicate him. So while he may have been technically operating in “bad faith” according to ICANN’s definition, he was likely not doing so in the way we think of day to day.