Bittrex, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1806001790692
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrexcom.com>, registered with Dynadot, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2018; the Forum received payment on June 7, 2018.
On June 10, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <bittrexcom.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@bittrexcom.com. Also on June 11, 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 July 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a U.S.-based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark. Complainant has rights in the BITTREX mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00003231077, registered October 6, 2017). Respondent’s <bittrexcom.com> domain name is confusingly similar to Complainant’s BITTREX mark as Respondent incorporates the mark in its entirety and adds the generic term “com” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bittrexcom.com> domain name. Respondent is not licensed or authorized to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to divert users to the “HashFlare” website, which offers competing cryptocurrency mining services on a subscription basis.
Respondent registered and is using the <bittrexcom.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and divert users to the disputed domain name by passing off as Complainant and offering competing cryptocurrency exchange services. Respondent also registered the disputed domain name with a privacy service. Furthermore, Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the disputed domain name and subsequent use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <bittrexcom.com> domain name.
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 to have rights in the BITTREX mark through its trademark registrations with the USPTO and UKIPO. Registering a mark with multiple governmental authorities is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). 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.”). Complainant provides copies of its USPTO (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018) and the UKIPO (e.g., Reg. No. UK00003231077, registered October 6, 2017) registrations for the BITTREX mark. Complainant’s BITTREX mark was filed on February 13, 2017. This date is sufficient to establish rights in the mark. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Respondent’s domain name was requested after that date. The Panel finds that Complainant has sufficiently demonstrated its rights in the BITTREX mark per Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <bittrexcom.com> domain name is confusingly similar to Complainant’s BITTREX mark as Respondent adds a generic term and gTLD to the mark. Additions of a generic term and/or a gTLD to a complainant’s mark does not negate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant argues Respondent adds the term “com” and the “.com” gTLD to the BITTREX mark. The Panel finds from Complainant’s uncontested allegations and evidence that the Respondent’s disputed domain name is confusingly similar to Complainant’s BITTREX mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 asserts Respondent has no rights or legitimate interests in the <bittrexcom.com> domain name because Respondent is not authorized or licensed to use Complainant’s BITTREX mark. Further, Complainant argues Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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). Additionally, lack of authorization to use a complainant’s mark may evince a finding that a respondent lacks rights or legitimate interests in the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”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.”). Complainant provides a copy of relevant WHOIS information which identifies Respondent as “Super Privacy Service LTD c/o Dynadot,” and there is no other evidence in the record to show Respondent was authorized to use the BITTREX mark. The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii) and that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Complainant contends Respondent is not using the <bittrexcom.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant argues Respondent attempts to divert users to a third party website, which offers competing, cryptocurrency mining and exchange services. Use of a disputed domain name to compete with a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). 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).”). Complainant argues Respondent uses the disputed domain name to redirect users from Complainant’s business to the “HashFlare” website (located at <hashflare.io>), which offers cryptocurrency mining services on a subscription basis. Complainant also contends that this website and the disputed domain name are under common ownership and control. The Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant alleges Respondent registered and uses the <bittrexcom.com> domain name in bad faith. Specifically, Complainant contends Respondent disrupts Complainant’s business and diverts users to the disputed domain name, for commercial gain, by attempting to pass itself off as Complainant and offering competing cryptocurrency exchange services. Use of a disputed domain name to pass off and/or offering competing goods or service is indicative of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing 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.”). Complainant claims Respondent uses the disputed domain name to divert Internet users seeking Complainant’s business to the disputed domain name, which then redirects users to the <hashflare.io> domain name. Complainant argues users are offered cryptocurrency mining and exchange services on a subscription basis. The Panel finds Respondent’s use of the disputed domain name to pass itself off and/or compete demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends Respondent had actual knowledge of Complainant’s rights in the BITTREX marks prior to registering the <bittrexcom.com> domain name and Respondent’s subsequent use. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). However, arguments regarding actual knowledge of a complainant’s mark may be sufficient to demonstrate bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues Respondent use of the BITTREX mark to drive traffic to a website offering competitive cryptocurrency trading services demonstrates Respondent’s actual knowledge. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s rights in the BITTREX mark and registered and used the disputed domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bittrexcom.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 12, 2018
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