Bittrex, Inc. v. TRUNG TOAN NGUYEN
Claim Number: FA1805001784882
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is TRUNG TOAN NGUYEN (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrextool.com>, registered with GoDaddy.com, 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 May 3, 2018; the Forum received payment on May 3, 2018.
On May 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bittrextool.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@bittrextool.com. Also on May 4, 2018, 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 May 29, 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 the third largest cryptocurrency exchange in the world and has been doing business under the BITTREX mark since 2014. Complainant has rights in the BITTREX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018, filed Feb. 13, 2017). See Compl. Ex. E. Respondent’s <bittrextool.com> is confusingly similar to the Complainant’s BITTREX mark because it incorporates the mark in its entirety adding only the descriptive phrase “tool.”
ii) Respondent lacks rights or legitimate interests in the <bittrextool.com> domain name. Respondent is not commonly known by the name and Complainant has not authorized Respondent to use the BITTREX mark. Additionally, Respondent has failed to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead Respondent uses a confusingly similar domain name resolve to a website that promotes a “B-Tool” which aids an illegal “pump and dump” scheme in connection with cryptocurrency. See Compl. Ex. F.
iii) Respondent has registered and is using the <bittrextool.com> name in bad faith. Respondent uses the domain name to create confusion to redirect users to a website to promote a “pump and dump” scam which target Complainant’s cryptocurrency exchange. See Compl. Ex. F. Such use disrupts Complainant’s business. Further, due to the incorporation of the BITTREX mark in the disputed domain name and Respondent’s offering a tool to use with Complainant’s cryptocurrency exchange, it is clear Respondent registered <bittrextool.com> domain name with actual knowledge of the mark’s existence.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the disputed domain name on December 9, 2017.
2. Complainant has established rights in the BITTREX mark through its registration with the USPTO (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018, filed Feb. 13, 2017).
3. The resolving webpage of the disputed domain name displays the “B-Tool” cryptocurrency content.
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 claims rights in the BITTREX mark through its registration with the USPTO (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018, filed Feb. 13, 2017). See Compl. Ex. E. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). Rights in a mark can date back to the filing date of the mark with a trademark authority. 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 concludes the Complainant’s registration of the BITTREX mark is sufficient under Policy ¶ 4(a)(i), and that Complainant’s rights in the mark date back to February 13, 2017.
Complainant further argues the <bittrextool.com> domain name is confusingly similar to the BITTREX mark as it includes the mark in its entirety and merely adds the descriptive word “tool.” The Panel also notes that the domain name adds the generic top-level domain (“gTLD”) “.com” and finds that such changes are not sufficient to distinguish a domain name from an incorporated mark per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”). Therefore, the Panel finds the <bittrextool.com> domain name is confusingly similar to the BITTREX mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <bittrextool.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BITTREX mark. Without a response, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the 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). The Panel notes that the WHOIS information in the record identifies Respondent as “Trung Toan Nguyen.” See Compl. Ex. A. Additionally, lack of evidence in the record to indicate that a Complainant authorized Respondent to register a domain name using Complainant’s mark supports the conclusion that Respondent does not have rights or legitimate interests in a disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <bittrextool.com> domain name under Policy ¶ 4(a)(ii).
Complainant further argues that Respondent lacks rights or legitimate interests in the domain name due to a lack of offering bona fide good or services nor a legitimate noncommercial or fair use. Instead, Complainant avers that Respondent registered the domain name in order to offer competing services to commercially benefit through the use of a fraudulent, illegal scheme. Using a domain name to compete with a complainant and conduct an illegal scheme generally fails to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorised use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides screenshots of the resolving webpage, which displays the term “B-Tool” and appears to allow for trading of cryptocurrency. See Compl. Ex. F. Complainant avers that the “B-Tool” function is illegal and provides articles to further this assertion. Id. As such, the Panel agrees that Respondent engages in a competing service and attempts to further an illegal scam, failing to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and/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 name.
Complainant argues that Respondent registered and uses the <bittrextool.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing and illegal goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under 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).”); see also Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). As noted above, Complainant provides screenshots of the “B-Tool” cryptocurrency content on the resolving webpage, as well as information about the illegality of the “B-Tool” use. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time of registering the <bittrextool.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a 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 due to the incorporation of the BITTREX mark in the disputed domain name and Respondent’s offering a tool to use with Complainant’s cryptocurrency exchange, it is clear Respondent registered <bittrextool.com> domain name with actual knowledge of the mark’s existence. The Panel infers due to the manner of use of the disputed domain name 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 <bittrextool.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 30, 2018
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