Domain Name and Trademark Dispute over “Bitcoin Cash City”

A legal fight that started in September 2022 over the domain name “BitcoinCashCity.com.au” and the Trade mark “Bitcoin Cash City” has come to an end.

Hayden Dane Otto applied to register the domain name and trademark for a wide range of education, event, and media services related to crypto. Noel Lovisa, a fellow crypto advocate and business owner from Townsville, opposed the registration, claiming he had used the name first and that Otto filed the application in bad faith.

Key Players:

• Hayden Otto: Crypto influencer, educator, and videographer. Known for creating crypto content and organizing events.
• Noel Lovisa: CEO of several companies supporting Bitcoin Cash (BCH), including Code Valley and BCH Pacific. Claims his businesses pioneered the “Bitcoin Cash City” branding in Townsville.

The Dispute:

Lovisa argued:

1. Ownership (Section 58): He used “Bitcoin Cash City” first and Otto had no right to register it.
2. Bad Faith (Section 62A): Otto only filed the trademark to block Lovisa and take advantage of the brand Lovisa helped build.
3. Reputation Confusion (Section 60): The term was already associated with Lovisa’s work, so Otto’s registration would confuse the public.

Otto responded that:

• He conceived and promoted the phrase independently, including organizing the “Bitcoin Cash City Conference.”
• His use of domain names and social media related to the brand started before he was ever employed by Lovisa’s companies.
• The phrase was never clearly owned by Lovisa or his companies and was used descriptively in the community.

The Decision:

• The hearing officer ruled that none of Lovisa’s claims were proven. There wasn’t enough clear evidence that he owned the brand, had established a reputation with it, or that Otto acted in bad faith.
• While both sides were involved in promoting Bitcoin Cash and organizing events, the ownership of the phrase “Bitcoin Cash City” was murky.
• Because Lovisa couldn’t prove his claims and the evidence showed Otto used the name publicly and independently, the trademark will be registered to Otto.

Outcome:

• Otto wins the trademark “Bitcoin Cash City” and this term will proceed to be registered in his name unless Lovisa appeals within 21 days.
• Lovisa must pay Otto’s legal costs.
• Otto will keep his domain name “BitcoinCashCity.com.au“.

Otto also won against Lovisa’s previous UDPR Domain Dispute filings of ownership over the domains bchpacific.com and bitcoincashcity.com as mentioned in this WIPO Decision back in 2022.

Critical Point: Listing a Domain for Sale Is Not Inherently Bad Faith

A significant part of the WIPO decision revolved around the fact that Otto listed the bitcoincashcity.com domain for sale (suggesting AUD 40,000 on Reddit), which the complainants attempted to frame as evidence of bad faith. The panel, however, made a notable distinction: simply offering a domain for sale—even one similar to a trademark or one used previously in a joint venture—does not automatically equate to bad faith registration or use. The complainants needed to show that Otto registered the domain with intent to target the complainants’ trademark rights unfairly, which they failed to do.

Implications for Domain Investors

This finding is a positive precedent for domain name investors. It underscores that ownership of a domain that resembles a mark—especially one not yet registered as a trademark—and listing it for sale is not inherently a violation of UDRP rules. Investors can maintain domain portfolios and engage in resale activities without being automatically accused of bad faith, provided there’s no clear evidence of intent to harm or exploit specific trademark owners.

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