Bittrex, Inc. v. Protection of Private Person / Privacy Protection / Privacy protection service - whoisproxy.ru
Claim Number: FA1712001762332
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Protection of Private Person / Privacy Protection / Privacy protection service - whoisproxy.ru (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <bittrrex.info> and <bittrex.promo>, registered with Registrar of Domain Names REG.RU 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 11, 2017.
On December 18, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <bittrrex.info> and <bittrex.promo> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 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@bittrrex.info and postmaster@bittrex.promo. Also on December 18, 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 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Bittrex, Inc., is a U.S.-based company which uses the BITTREX mark to operate one of the leading cryptocurrency exchanges in the world. See Compl. Ex. D. Complainant has rights in the BITTREX mark through its registration of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., No. UK00003231077, registered Jun. 10, 2017). See Compl. Ex. E.1. Respondent’s <bittrrex.info> domain name is confusingly similar to Complainant’s mark as it is a deliberate misspelling of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.info.” Respondent’s <bittrex.promo> domain name is confusingly similar to Complainant’s BITTREX mark as the domain name consists completely of the mark, and merely adds the gTLD “.promo.”
ii) Respondent has no rights or legitimate interests in the <bittrrex.info> and <bittrex.promo> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use the BITTREX mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass off as Complainant in furtherance of a phishing scheme to obtain customer information. See Compl. Ex. F1-F2.
iii) Respondent registered and is using the <bittrrex.info> and <bittrex.promo> domain names in bad faith. Respondent registered and used the domain names to direct Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Compare Compl. Ex. D4 (Complainant’s resolving domain) with Compl. Ex. F1-F2 (Respondent’s resolving domains). Respondent passes off as Complainant in order to phish for users’ information. See Compl. Ex. F1. Further, such use indicates Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered and subsequently used the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <bittrrex.info> and <bittrex.promo> domain names on November 21, 2017 and November 20, 2017, respectively. See Compl. Ex. A1-A2.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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."
Preliminary Issue 1: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names are under common control because the domain names were registered within one (1) day of each other; both were registered with a Russia-based registrar; and both resolve to a domain with identical content. See Compl. Ex. F1-F2.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled and decides that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Preliminary Issue 2: Language of Proceeding
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent can proceed in the English language because the domain names are based on the name of an American company; the email addresses associated with the domain names are based entirely on English terms; and the resolving webpages for both domains are entirely in English and target English speaking users. See Compl. Ex. F1-F2. Further, it would be unduly burdensome and costly to require Complainant to proceed in the Russian language.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 claims it has rights in the BITTREX mark through its registration of the mark with the UKIPO (e.g., No. UK00003231077, registered Jun. 10, 2017). See Compl. Ex. E.1. Registration of a mark with the UKIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”). Accordingly, the Panel finds that Complainant has established rights in the BITTREX mark for the purposes of Policy ¶4(a)(i).
Complainant next argues that Respondent’s <bittrrex.info> and <bittrex.promo> domain names are confusingly similar to Complainant’s mark as one intentionally misspells Complainant’s mark and adds the gTLD “.info,” while the other merely adds the gTLD “.promo” to the entire BITTREX mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <bittrrex.info> domain name is confusingly similar, and the <bittrex.promo> domain name is identical, to the BITTREX mark under Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <bittrrex.info> and <bittrex.promo> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Protection of Private Person / Privacy Protection” and “Privacy protection service – whoisproxy.ru” as the registrant for the <bittrrex.info> and <bittrex.promo> domain names, respectively. See Compl. Ex. A1-A2. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BITTREX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the BITTREX mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <bittrrex.info> and <bittrex.promo> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant to engage in a phishing scheme to obtain information from users. Passing off in furtherance of a phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of both its own webpage along with Respondent’s, and all appear to contain nearly identical content and color schemes. Compare Compl. Ex. D4 (Complainant’s resolving domain) with Compl. Ex. F1 (Respondent’s resolving domain). As such, the Panel agrees that Respondent attempts to pass off as Complainant to fraudulently acquire personal information from unsuspecting users, failing to use the domain names in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and uses the <bittrrex.info> and <bittrex.promo> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain names for its own commercial gain. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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).”). Complainant alleges the commercial gain occurs by Respondent’s attempts to phish for information, which I will reflect in the following paragraph. Accordingly, as the Panel agrees that Respondent attempts to commercially benefit off Complainant’s mark, the Panel finds bad faith under Policy ¶ 4(b)(iv).
In addition, Complainant argues that Respondent uses the <bittrrex.info> and <bittrex.promo> domain names to pass off as Complainant to further a phishing scheme intended to defraud users. Phishing schemes can evince bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As noted above, Complainant provides screenshots of both its own webpage along with Respondent’s two webpages, and both appear to contain nearly identical content and color schemes. Compare Compl. Ex. D4 with Compl. Ex. F1-F2. As such, the Panel agrees that Respondent attempts to pass off as Complainant to phish for information, and thus registered and uses the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s BITTREX mark at the time it registered the domain names. Actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See 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). Complainant contends that Respondent must have had actual knowledge of the mark based on Respondent’s use of the BITTREX mark on its fraudulent website. See Compl. Ex. F1-F2. The Panel infers due to the manner of the use of the disputed domain name by Respondent with Complainant that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <bittrrex.info> and <bittrex.promo> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 15, 2018
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