Bittrex, Inc. v. Kenneth Dachi
Claim Number: FA1711001758150
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Kenneth Dachi (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrex.exchange>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2017; the Forum received payment on November 10, 2017.
On November 13, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <bittrex.exchange> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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.exchange. Also on November 16, 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 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant operates a global cryptocurrency exchange. Complainant uses the BITTREX mark in conjunction with its business practices. Complainant registered the BITTREX mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003231077, registered May 15, 2017). Complainant also registered the BITTREX mark with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 016727109, registered Oct. 13, 2017). Complainant applied to register the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87,333,760, filed Feb. 13, 2017).
2. Respondent’s <bittrex.exchange>[1] is confusingly similar to Complainant’s BITTREX mark because it incorporates the mark in its entirety, simply adding the “.exchange” top level domain (“TLD”), which is indicative of Complainant’s business.
3. Respondent does not have rights or legitimate interests in <bittrex.exchange>.
4. Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the BITTREX mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <bittrex.exchange> resolves to a website that provides information on a business in direct competition with Complainant.
5. Respondent registered and is using <bittrex.exchange> in bad faith. The domain name attracts internet users to Respondent’s website, presumably for commercial gain. Specifically, Respondent’s website contains information on Complainant’s competitor, Liqui, creating the false impression that there is a partnership between the two companies.
6. Respondent registered <bittrex.exchange> with actual knowledge of Complainant and its rights to the BITTREX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITTREX mark. Respondent’s domain name is confusingly similar to Complainant’s BITTREX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bittrex.exchange> domain name and that Respondent registered and uses the domain name in bad faith.
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 the 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.”).
Complainant operates a global cryptocurrency exchange. Complainant uses the BITTREX mark in conjunction with its business practices. Complainant registered the BITTREX mark with UKIPO (Reg. No. UK00003231077, registered May 15, 2017). Complainant also registered the BITTREX mark with EUIPO (Reg. No. 016727109, registered Oct. 13, 2017). Complainant has applied to register the BITTREX mark with USPTO (Ser. No. 87,333,760, filed Feb. 13, 2017). Registrations of a mark with multiple government trademark entities are sufficient to show rights in a 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.”). Therefore, the Panel determines that Complainant’s registrations with UKIPO and EUIPO are sufficient to show rights in the BITTREX mark.
Complainant asserts that Respondent’s <bittrex.exchange> is confusingly similar to Complainant’s BITTREX mark because it incorporates the mark in its entirety, simply adding the “.exchange” top level domain (“TLD”), which is indicative of Complainant’s business. The addition of a TLD is inconsequential to a Policy ¶ 4(a)(i) analysis and does not distinguish the domain name from the original mark. See 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.”). The Panel concludes that Respondent’s <bittrex.exchange> domain name is confusingly similar to Complainant’s BITTREX mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bittrex.exchange> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent does not have rights or legitimate interests in the <bittrex.exchange> domain name. In support of its assertion, Complainant has provided evidence that Respondent is not commonly known by the domain name. WHOIS information associated with this case identifies Respondent as “Kenneth Dachi.” A respondent is not commonly known by a domain name where there is no evidence in the record, including the WHOIS information, showing that the respondent is, in fact, commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Moreover, Complainant has provided evidence that it has not authorized or licensed Respondent to use the BITTREX mark in any regard, nor is Respondent affiliated with Complainant.
Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. Complainant has shown that Respondent’s <bittrex.exchange> domain name resolves to a website that provides information on a business in direct competition with Complainant. Using a domain name containing a mark to which a complainant has rights and offering goods or services in direct competition with that complainant shows that the respondent is not making a bona fide offering of good or services. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in <bittrex.exchange>.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using <bittrex.exchange> in bad faith. Complainant argues the domain name attracts internet users to Respondent’s website, presumably for commercial gain. Specifically, Complainant has provided evidence that Respondent’s website contains information on Complainant’s competitor, Liqui, creating the false impression that there is a partnership between the two companies. Capitalizing on a complainant’s mark to create confusion among internet users and to offer competing good or services shows bad faith registration and use. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). “As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant,” the Panel may determine that “this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).” See Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003).
Finally, Complainant contends that Respondent registered <bittrex.exchange> with actual knowledge of Complainant and its rights to the BITTREX mark. As Respondent has incorporated exactly Complainant’s registered mark in the domain name, it is inconceivable that Respondent could have registered the domain name without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel holds that Respondent had actual knowledge of Complainant's mark when it registered <bittrex.exchange> and therefore the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
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.exchange> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 15, 2017
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