iFinex Inc. v. xu shuaiwei
Claim Number: FA1711001760249
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn LLP, Washington, USA. Respondent is xu shuaiwei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbitfinex.com>, registered with NameSilo, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2017; the Forum received payment on November 28, 2017.
On November 30, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <bbitfinex.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@bbitfinex.com. Also on December 1, 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 January 2, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, iFinex Inc., uses its BITFINEX mark to promote its goods and services in the financial services industry.
Complainant established common law rights in the mark by generating a strong secondary meaning in the mark. Respondent’s <bbitfinex.com> is confusingly similar to Complainant’s mark because it adds the letter “b” before the mark and appends the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its BITFINEX mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using <bbitfinex.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <bbitfinex.com> domain name to redirect internet users to a competing website for the purpose of collecting affiliate compensation from a third party.
Respondent registered the <bbitfinex.com> domain name in bad faith. Respondent is the registrant of at least 2,910 domain names, as indicated by a reverse WHOIS search. Some of these domain names are confusingly similar or identical to trademarks held by third parties. Further, Respondent disrupts Complainant’s business by using the domain name to redirect Internet traffic from Complainant’s website to the directly competitive <bitmex.com> website to generate referral fees, or otherwise benefit Respondent. Additionally, by simply adding an additional letter “b” to Complainant’s mark, Respondent engages in typosquatting. Finally, Respondent had actual and constructive notice of Complainant rights in the BITFINEX mark as Complainant has used the mark in commerce for four (4) years prior to Respondent registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in BITFINEX.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its BITFINEX trademark.
Respondent uses the <bbitfinex.com> domain name to direct internet users to a competing website for the purpose of collecting affiliate compensation and/or to secure some other benefit.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant submits sufficient unchallenged evidence of its BITFINEX mark acquiring secondary meaning for the Panel to find that Complainant has common law trademark rights in such mark. SeeKlabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”); see also, Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). While it is not necessary for the purpose of finding rights in a mark pursuant to Policy 4(a)(i), Complainant’s common law rights were acquired before Respondent registered the at-issue domain name. The Panel also notes that Respondent registered <bbitfinex.com> shortly after Complainant applied for various trademark registrations concerning BITFINEX and owned other trademark registrations which might be found to impart operative rights to Complainant regarding the at-issue domain name independent of its common law rights in BITFINEX.
Respondent’s <bbitfinex.com> domain name contains Complainant’s entire trademark prefixed with an additional letter “b” and with the top level domain name “.com” appended to the resulting string. The trivial differences between Respondent’s <bbitfinex.com> domain name and Complainant’s BITFINEX trademark are insufficient to distinguish one from the other under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <bbitfinex.com> domain name is confusingly similar to Complainant’s BITFINEX trademark. 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.’).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “xu shuaiwei” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <bbitfinex.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <bbitfinex.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <bbitfinex.com> domain name directs internet users to a competing website at <bitmex.com>. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interest, Respondent uses the <bbitfinex.com> domain name to direct internet users to a website that competes with Complainant. Doing so disrupts Complainant’s business and also trades upon the goodwill associated with Complainant’s BITFINEX trademark thereby demonstrating bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Next, Complainant shows that prior to the instant dispute Respondent registered multiple domain names that are confusingly similar to third party registered trademarks. Respondent’s past behavior suggests Respondent’s bad faith in the instant dispute pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Additionally, Respondent’s misspelling of Complainant’s trademark within the confusingly similar domain name indicates that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark. Here, Respondent insignificantly modifies Complainant’s trademark by prefixing a “b” to BITFINEX. The typosquatter then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for the target trademark, or as more likely in the instant case, will otherwise confuse the malformed trademark laden domain name with its target trademark when viewed. The typosquatter exploits the confusion it created to the detriment of the target trademark’s owner and for its own benefit. Importantly, typosquatting is a well-recognized hallmark of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the BITFINEX mark when Respondent registered the <bbitfinex.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant. Registering and using a confusingly similar domain name, with knowledge of Complainant’s rights in such domain name, shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bbitfinex.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 1, 2018
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