Bittrex, Inc. v. Matheus Lemos
Claim Number: FA1807001797378
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Matheus Lemos (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrex-en.com>, registered with NameCheap, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2018; the Forum received payment on July 18, 2018.
On July 20, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <bittrex-en.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@bittrex-en.com. Also on July 23, 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 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, Bittrex, Inc., runs one of the largest cryptocurrency exchanges in the world, with more than 1,400,000 users based in 60 countries. Complainant has rights in the BITTREX trademark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUTM”) and others. Respondent’s <bittrex-en.com> domain name is confusingly similar to Complainant’s BITTREX mark because it wholly incorporates the mark, and is only differentiated by the addition of the descriptive term “-en” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bittrex-en.com> domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant in furtherance of a phishing scam by resolving the <bittrex-en.com> domain to a page that mimics Complainant’s own website and is designed to steal the account log-in credentials of Complainant’s customers. Additionally, Respondent is not authorized to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name.
Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the <bittrex-en.com> domain name. Furthermore, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s resolving website where Respondent passes itself off as Complainant in furtherance of a phishing scheme aimed at collecting users’ log-in information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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 based upon its registration of the marks with the USPTO, the EUTM, and other jurisdictions and it submits into evidence images of its trademark registration certificates. Registration of a mark with a recognized national governmental authority is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant also submits evidence of how its mark is actually used in promoting its business and this further supports its claim to rights in the mark. Therefore, the Panel finds that the Complainant has rights in the BITTREX mark per Policy ¶ 4(a)(i).
Next, Complainant argues that respondent’s <bittrex-en.com> domain name is confusingly similar to Complainant’s BITTREX mark because it wholly incorporates the mark while adding a descriptive term and a gTLD. Adding a descriptive term and a gTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also 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).). Here, the <bittrex-en.com> domain name wholly incorporates the BITTREX mark, adds the descriptive term “-en”, and uses the “.com” gTLD. Complainant contends that “-en” is a descriptive term to indicate that the English language is being used.
In light of the evidence presented, the Panel concludes that Respondent’s <bittrex-en.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
As it is not always possible to prove a negative fact, UDRP panels have held that 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). If it is successful in this effort, the burden then shifts to Respondent to show that it does, in fact, have rights or legitimate interests in its domain name. 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 the Respondent fails to use <bittrex-en.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain to pass itself off as Complainant in furtherance of a phishing scam. Use of a disputed domain name to pass oneself off as a complainant in furtherance of a phishing scam that steals users’ sensitive information does not constitute a bona fide offering of goods or services nor a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii). In fact, this is not the first time that the Complainant has faced this particular situation. See, e.g., Bittrex, Inc. v. Protection of Private Person/Privacy Protection/ Privacy protection service - whoisproxy.ru, FA 1762332 (Forum Jan. 15, 2018) (Where the respondent’s website contains nearly identical content and color scheme as the complainant’s own website, “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”); Bittrex, Inc. v. Evgenii Krivorot, FA 1759138 (Forum Dec. 19, 2017) (“The disputed domain name resolves to a website that is identical to Complainant’s website and phishes for users’ personal and financial information. This is not a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name.”). See also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, submitted into evidence are screenshots showing that Respondent’s <bittrex-en.com> domain name resolves to a log-in webpage that is nearly identical to Complainant’s log-in webpage. Complainant argues that the disputed domain name is being used to harvest the log-in credentials and other account information of Complainant’s customers’ in order to steal from these accounts. Accordingly, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant further alleges that Respondent lacks rights and legitimate interests in the <bittrex-en.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the BITTREX mark. Where a response is lacking, WHOIS information may be used to identify a respondent per 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 from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). In the present case, the WHOIS information of record identifies Respondent as “Matheus Lemos.” Additionally, no information in the record indicates that Respondent is known otherwise or was authorized to use the BITTREX mark.
In light of the foregoing, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BITTREX trademark prior to registering the <bittrex-en.com> domain name. In support of this it points out that the mark is a coined term, the mark has gained wide notoriety in the cryptocurrency field, and it points to the near identity between Respondent’s website and the legitimate <bittrex.com> site. Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registration of its domain name.
Complainant goes on to claim that the Respondent registered and uses the <bittrex-en.com> domain name to pass itself off as Complainant with the goal of harvesting internet users’ log-in and other personal information so that it may steal from their cryptocurrency accounts on Complainant’s website. Using a confusingly similar domain name to pass oneself off as a complainant in furtherance of such a phishing scheme may demonstrate bad faith per Policy ¶ 4(b)(iv). See Twentieth Century Fox Film Corporation v. Ian, FA 1772894 (Forum March 26, 2018) (where respondent’s website is “designed to fraudulently obtain the login credentials of Complainant's employees” the panel found that it is “obviously intended to create confusion with Complainant, likely as part of a fraudulent phishing scheme, [and] is indicative of bad faith under these provisions of the Policy.”); see also United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Here, Complainant provides screenshots of its website and compares them with a screenshot of the <bittrex-en.com> domain name site. It is apparent that Respondent’s site is a near identical copy of Complainant’s own log-in page with input fields for a user’s “Email address” and “Password”.
Respondent’s obvious attempt at passing itself off as Complainant in order to confuse users into providing log-in information at the disputed domain name’s website leads the Panel to conclude that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bittrex-en.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 16, 2018
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