Bittrex, Inc. v. Vitor
Claim Number: FA1711001756922
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Vitor (“Respondent”), Russia.
The domain names at issue are <bittrex.biz> and <bittrrexx.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that has acted independently and impartially and to the best of knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2017; the Forum received payment on November 2, 2017.
On November 4, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bittrex.biz> and <bittrrexx.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2017 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@bittrex.biz, postmaster@bittrrexx.com. Also on November 8, 2017, 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 Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an American-based company that operates one of the leading cryptocurrency exchanges in the world in connection to the BITTREX mark. Complainant began using the BITTREX mark in 2014 and has continuously used the mark in connection to its services. Additionally, Complainant holds the registration for the BITTREX mark with the United Kingdom Intellectual Property Office (“UKIPO”)(Reg. No. UK00003231077, registered June 10, 2017) and the European Union Intellectual Property Office (“EUIPO”)(Reg. No. 16,726,109, registered Oct. 13, 2017), as well as applied for the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (App. No. 87,333,760, filed on Feb. 13, 2017). Respondent’s <bittrex.biz> and <bittrrexx.com> domain names are confusingly similar to Complainant’s BITTREX mark because they incorporate the mark in its entirety, are differentiated only by adding an extra “r” and “x” in one of these the domain names, and attaching the “.biz” and “com” generic top level domains (“gTLD”).
Respondent does not have any rights or legitimate interests in the <bittrex.biz> and <bittrrexx.com> domain names. Respondent is neither licensed nor authorized to use the BITTREX mark and is not commonly known by either of thr disputed domain names. Additionally, Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names as part of a fraudulent, phishing scheme to obtain customer information by replicating Complainant’s website log-in page and passing itself off as Complainant.
Respondent registered the <bittrex.biz> and <bittrrexx.com> domain names in bad faith. Respondent registered the disputed domain names, for commercial gain, in order to create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain names. Additionally, Respondent had actual knowledge of Complainant’s rights in the BITTREX marks prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <bittrex.biz> and <bittrrexx.com> domain names on August 24, 2017.
FINDINGS AND 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
Complainant claims to hold the registrations of the BITTREX mark with several government trademark offices and has applied the mark to the USPTO. Generally, registering a mark with multiple trademark offices is sufficient to show rights in a mark while applying a mark does not necessarily show rights in the mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); see also Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). In this case, Complainant has supplied this Panel with copies of its UKIPO (Reg. No. UK00003231077, registered Jun. 10, 2017) and EUIPO (Reg. No. 16,726,109, registered Oct. 13, 2017) registrations and a copy of its USPTO application (App. No. 87,333,760, filed on Feb. 13, 2017). Therefore, the Panel finds that Complainant has shown its rights in the BITTREX mark by holding registrations with multiple trademark offices.
Next, Complainant alleges that Respondent’s <bittrex.biz> and <bittrrexx.com> domain names are confusingly similar to Complainant’s BITTREX mark. Complainant argues that Respondent failed to create a unique domain name because Respondent merely added letters to the second disputed domain name and attached gTLDs to the mark in both instances. Generally, adding letters to a mark and attaching gTLDs are insufficient changes to differentiate a disputed domain name from a mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”) In this case, Respondent’s <bittrrexx.com> domain name merely adds the extra letters “r” and “x” to the BITTREX mark and attaches the “.com” gTLD, while Respondent’s <bittrex.biz> domain name merely attaches a “.biz” gTLD. Therefore, the Panel finds that Respondent’s <bittrex.biz> and <bittrrexx.com> domain names are confusingly similar to Complainant’s BITTREX mark.
Complainant has therefore satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no right or legitimate interests in the <bittrex.biz> and <bittrrexx.com> domain names because Respondent is not affiliated, licensed, or authorized to use the BITTREX mark. Additionally, Complainant argues that Respondent is not commonly known by either the <bittrex.biz> or <bittrrexx.com> domain names. In the event a respondent fails to submit a response, panels have relied on WHOIS information to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, WHOIS information identifies the registrant for both <bittrex.biz> and <bittrrexx.com> domain names as “Vitor.” There is no other evidence to suggest Respondent is known by either of the disputed domain names nor the BITTREX mark. Therefore, the Panel finds that Respondent is not commonly known by the <bittrex.biz> and <bittrrexx.com> domain names and thus that Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent does not have rights or legitimate interests in the <bittrex.biz> and <bittrrexx.com> domain names because neither disputed domain name is used for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues Respondent is using the disputed domain names as part of a fraudulent, phishing scheme to obtain customer information by replicating Complainant’s website and passing itself off as Complainant. Additionally, Complainant argues that Respondent’s fraudulent and illegal activity demonstrates its lack of rights or legitimate interests in the disputed domain names. Generally, attempting to obtain personal information, likely for fraudulent or illegal purposes, by passing off as a complainant does not amount to a right or legitimate interest in that disputed domain name. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Respondent’s <bittrex.biz> and <bittrrexx.com> domain names resolve into sites that require users’ login credentials to their Bittrex accounts. Both of the disputed domain names are identical to one another and it is presumed that Respondent obtains sensitive information for users’ cryptocurrency exchange accounts they registered with Complainant. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <bittrex.biz> and <bittrrexx.com> domain names and that Complainant has therefor satisfied Policy ¶¶ 4(c)(i) and (iii).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and used the <bittrex.biz> and <bittrrexx.com> domain names in bad faith by redirecting Internet users to a website that mimicked Complainant’s website to confuse Internet users into believing that Respondent is, or is otherwise affiliated or associated with, Complainant. Use of a disputed domain name by a respondent to intentionally create and benefit from confusion as to the affiliation with a complainant evinces a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy
¶ 4(a)(iii).”). Complainant argues that Respondent registered the <bittrex.biz> and <bittrrexx.com> domain names for commercial gain, in order to create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain names, as <bittrex.biz> and <bittrrexx.com> resolve into identical websites where the BITTREX mark is prominently displayed along with a log in option. Additionally, the webpage also offers a “Forgot password” and a “sign up” option, which Complainant asserts both likely indicate that Respondent is operating a phishing scheme to obtain personal information from users seeking to use Complainant’s cryptocurrency exchange services. Therefore, the Panel finds that Respondent’s disputed domain names attempt to pass Respondent off as Complainant as part of a phishing scheme. Policy ¶ 4(b)(iv) has therefore been satisfied.
Finally, Complainant alleges that Respondent must have had actual knowledge of Complainant's rights in the BITTREX mark prior to registration of the disputed domain names. Findings of actual knowledge are sufficient to establish bad faith registration per Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where Respondent was "well-aware of Complainant's YAHOO! mark at the time of registration"). Complainant contends that, because of Respondent’s use of the mark on its fraudulent websites, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registration of the disputed domain names. Therefore, the Panel finds that Respondent had actual knowledge of the BITTREX mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bittrex.biz> and <bittrrexx.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 14, 2017
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