Bittrex, Inc. v. Caroline Alves Maia
Claim Number: FA1807001796113
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Caroline Alves Maia (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitrex.site>, registered with Hosting Ukraine 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 10, 2018; the Forum received payment on July 10, 2018.
On July 12, 2018, Hosting Ukraine LLC confirmed by e-mail to the Forum that the <bitrex.site> domain name (the “Domain Name” is registered with Hosting Ukraine LLC and that Respondent is the current registrant of the name. Hosting Ukraine LLC has verified that Respondent is bound by the Hosting Ukraine 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 July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 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@bitrex.site. Also on July 13, 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 August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE
Language of the Proceedings
Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, but it also provides, and UDRP panels have affirmed, that the Panel has discretion to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the case. 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). The registration agreement for the Domain Name is written in Russian, but Complainant alleges that Respondent is conversant and proficient in English, and that the proceeding should be conducted in English. Pursuant to Rule 11(a) the Panel evaluates the circumstances of this case as follows: The Domain Name is based upon the name of an American company. The language appearing on the web site resolving from it is English and the site targets English speakers. See, Complaint Exhibit F-1. Further, while the Complaint is written in English, the Written Notice of the Complaint sent to Respondent by The Forum is written in Russian and Respondent has filed no protest or objection to the Complaint or to these proceedings being conducted in English.
On this evidence, the Panel finds that the Respondent is conversant and proficient in the English language. After considering the circumstances of the case, and pursuant to UDRP Rule 11(a), the Panel decides that the proceeding will proceed in the English language.
A. Complainant
Complainant is a U.S.-based company which uses the BITTREX mark to operate one of the leading cryptocurrency exchanges in the world. It registered the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,380,786) on January 16, 2018. The Domain Name is confusingly similar to Complainant’s BITTREX mark as it incorporates that mark entirely, altering it only by a subtle misspelling which eliminates one of the letters “t” in the mark and by the addition of the generic top-level domain (“gTLD”) “.site.”
Respondent has no rights or legitimate interests in the Domain Name. She is not commonly known by the Domain Name, nor has Complainant authorized or licensed her 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 is using the Domain Name to pass herself off as Complainant in furtherance of a phishing scheme to obtain private customer information.
Respondent registered and is using the Domain Name in bad faith. She registered and used it to attract 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. Respondent’s web site prompts consumers’ to enter the log-in information for their accounts with Complainant, and, on information and belief, uses that information to steal from those accounts.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant registered its BITTREX mark with the USPTO (Reg. No. 5,380,786) on January 16, 2018. See, Complaint Exhibit E-3. Registration of a mark with the USPTO has routinely been held to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, altering it only by a subtle misspelling which omits one of the letters “t” in Complainant’s mark and by adding the gTLD “.site”. These changes are not sufficient to distinguish a domain name from a complainant’s mark for the purposes of Policy ¶4(a)(i). Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”), Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the BITTREX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) she is not commonly known by the Domain Name, (ii) she is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Name, and (iii) she is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to information furnished to the Forum by the registrar of the Domain Name, the registrant is “Caroline Alves Maia.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its BITTREX mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit F-1 is a screenshot of the web site resolving from the Domain Name as of July 6, 2018. Complaint Exhibit F-2 is a screenshot of the login page for Complainant’s web site, located at <bittrex.com>. See, Complaint Exhibits F and F-3. They are virtually identical, with the same color scheme, the same layout and the same substantive content. They both prompt the visitor to enter his or her email address and password and click on the login prompt. If, because of the confusing similarity between the Domain Name and Complainant’s mark and web site location, a customer of Complainant mistakenly logs on to the Respondent’s web page and follows the prompts on it, Respondent acquires the means to log in to that customer’s cryptocurrency account with Complainant and take whatever actions there she might desire. Respondent is clearly impersonating Complainant and engaging in a fraudulent phishing scheme. Passing off in furtherance of a phishing scheme does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). 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 has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Name to phish for the login credentials of Complainant’s customers to enable her to login to their cryptocurrency accounts with Complainant. The potential for theft and other mischief is obvious. Complainant alleges on information and belief that Respondent has in fact used this scheme to steal from its customers’ accounts (See, Declaration of Patchen M. Haggerty, Complaint Exhibit F) and those allegations have not been disputed or contested in any way by Respondent. This conduct amounts to attracting, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of her web site and fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). 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).”).
Respondent’s fraudulent phishing scheme also qualifies on its own as evidence of bad faith registration and use. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of ¶ 4(Policy b) allows for consideration of additional factors in an analysis for bad faith, and passing oneself off as a complainant to phish for sensitive private information from others has often been held to evidence bad faith registration and use. 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).”).
Finally, it is evident from Complainant’s world-wide standing as a cryptocurrency exchange and the close similarity between Complainant’s mark and web site on the one hand and Respondent’s Domain Name and web site on the other that Respondent had actual knowledge of Complainant’s BITTREX mark on June 15, 2018, when she registered the Domain Name. See, Complaint Exhibit A for registration date. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <bitrex.site> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 6, 2018
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