Bittrex, Inc. v. Nirmala Langford
Claim Number: FA1802001770165
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Nirmala Langford (“Respondent”), Canada
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1bittrex.com>, registered with 1&1 Internet SE.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically February 1, 2018; the Forum received payment February 1, 2018.
On February 2, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <1bittrex.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE verified that Respondent is bound by the 1&1 Internet SE registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@1bittrex.com. Also on February 2, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 February 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
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”) and the European Union Intellectual Property Office (“EUIPO”) (UKIPO—Reg. No. UK00003231077, registered Oct. 6, 2017, effective date May 15, 2017; EUIPO—Reg. No. 016727109, registered Oct. 13, 2017, filed May 15, 2017) See Compl. Ex. E.1. Respondent’s <1bittrex.com> domain name is confusingly similar to Complainant’s BITTREX mark as the domain name only adds the number “1.”
Respondent has no rights or legitimate interests in the <1bittrex.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the BITTREX mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent previously used the domain name to pass off as Complainant in furtherance of a phishing scheme to obtain customer information. See Compl. Exs. F2-F3. Currently, Respondent uses the domain name to advertise a third-party website called “The Bitcoin Code.” See Compl. Ex. F4.
Respondent registered and is using the <1bittrex.com> domain name in bad faith. Respondent registered and used the domain name 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. See Compl. Exs. F2-F3. Respondent passes off as Complainant in order to phish for users’ information. See Compl. Exs. F2-F3. Currently, Respondent uses the domain name to advertise a third-party website called “The Bitcoin Code.” See Compl. Ex. F4. 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 name.
B. Respondents Contentions in Response in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name January 20, 2018. See Compl. Ex. A.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name containing the mark.
Respondent registered a disputed domain name that contains in its entirety the
Complainant’s protected mark and the domain name is confusingly similar to the
mark.
Respondent registered and uses the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights in the BITTREX mark due to its registration of the mark with the UKIPO and the EUIPO (UKIPO—Reg. No. UK00003231077, registered Oct. 6, 2017, effective date May 15, 2017; EUIPO—Reg. No. 016727109, registered Oct. 13, 2017, filed May 15, 2017). See Compl. Ex. E. Registration of a mark with a trademark agency, such as the UKIPO or EUIPO, is sufficient to establish rights to a mark pursuant to Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.); see also 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.”). Further, rights in a mark, which is eventually registered, date back to the application filing date of the mark. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). The Panel notes, however, that while the relevant date of rights in a mark date back to the filing date for USPTO-registered marks, this policy is not the same among all trademark registries. However, such dating-back is the policy for the UKIPO. See UKIPO, Trade Marks Manual 229 (2017), available at https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/676130/manual-trade-marks-practice.pdf. Accordingly, the Panel finds that Complainant established sufficient rights to the BITTREX mark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <1bittrex.com> domain name is confusingly similar to Complainant’s mark as the domain name only adds the number “1” to the fully incorporated mark. The Panel notes that the domain name also adds the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark do not distinguish a domain name for the purposes of Policy ¶4(a)(i). See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); 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. Likewise, the absence of spaces are disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the <1bittrex.com> domain name is confusingly similar to the BITTREX mark under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that contains in its entirety Complainant’s protected mark and is confusingly similar to that mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 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 <1bittrex.com> domain name. 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 “Nirmala Langford” as the registrant. See Compl. Ex. A. 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 a lack of 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 name prior to its registration, and that Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <1bittrex.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <1bittrex.com> domain name 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 evidences 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 a screenshot of the resolving domain, which appears to contain Complainant’s BITTREX mark and a login box. See Compl. Exs. F2-F3. The Panel agrees that Respondent attempts to pass off as Complainant to fraudulently acquire personal information from unsuspecting users, failing to use the domain name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant argues that Respondent currently uses the domain name to advertise a third-party website called “The Bitcoin Code.” Using a confusingly similar domain name that advertises competing services does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the webpage associated with the domain name, which displays the message “Ride The Wave of bitcoin And you could earn up to $13,000 In Exactly 24 Hours” and other related content. See Compl. Ex. F4. The Panel therefore finds that Respondent’s current use of the domain name fails to confer rights and legitimate interests to Respondent per Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name containing Complainant’s protected mark; Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the <1bittrex.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for its own commercial gain. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain evidences bad faith under Policy ¶ 4(b)(iv). See 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. Complainant also claims Respondent advertises a competing “bitcoin” service, and provides a screenshot of the website associated with the domain name. See Compl. Ex. F4. Accordingly, the Panel agrees that Respondent attempts to commercially benefit off Complainant’s mark, conduct that supports findings of bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent uses the <1bittrex.com> domain name to pass off as Complainant to further a phishing scheme intended to defraud users. Phishing schemes evidence 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 a screenshot of the resolving domain, which contains the BITTREX mark along with a login box. See Compl. Exs. F2-F3. The Panel agrees that Respondent attempts to pass off as Complainant to phish for information, and thus registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s BITTREX mark at the time it registered the domain name. Actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name evidences 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. F2-F3. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii) based on the nominal use of the mark and the use given to the disputed domain name to phish for information.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name containing in its entirety Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <1bittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 12, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page