Bittrex, Inc. v. Robert K. Mueller / This domain is for sale. For inquiries email sell@domainnamesales.com
Claim Number: FA1709001751666
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Robert K. Mueller / This domain is for sale. For inquiries email sell@domainnamesales.com (“Respondent”), Slovenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbittrex.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2017; the Forum received payment on September 29, 2017.
On Oct 04, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <wwwbittrex.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 October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2017 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@wwwbittrex.com. Also on October 5, 2017, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. The Panel has made 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in BITTREX and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. It did offer to transfer the domain name after receipt of the Complaint.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark BITTREX in connection with its business providing a cryptocurrency exchange;
2. the disputed domain name was registered on May 25, 2017;
3. initially the disputed domain name redirected Internet users to the website of a competitor of Complainant, Local Bit Coins; it was then used to send internet users to a pornographic site;
4. respondent is the owner of over 1000 domain names;
5. the domain name has been for sale; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary Issue: Consent to Transfer
Respondent wrote to the Forum stating its readiness to transfer the disputed domain name to Complainant unconditionally. Complainant did not respond in any way to that offer to transfer of the domain name. The evidence is plain in this case that Respondent intended to capitalize on the registration and sale of the domain name. Panel notes that “consent-to-transfer” is one way in which cybersquatters attempt to avoid adverse findings against them and determines in this case to apply the Policy and make the analysis thereunder.[i]
Primary Issues
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.
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.[ii]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [iii] Equally, a complainant might prove unregistered common law rights in a trademark acquired through use and public recognition.[iv]
Complainant does not provide proof of a trademark registration and instead claims common law rights. The evidence provided with the Complaint shows several years of continuous use of the BITTREX trademark, extensive marketing and advertising expenditures to promote the BITTREX trademark, and an international business having broad media presence. The Panel is satisfied that Complainant has trademark rights in BITTREX.
Panel finds the disputed domain name to be confusingly similar to the trademark since the domain name takes the trademark and merely adds the non-distinctive integer “www” and a gTLD to the trademark. The trademark remains the distinctive part of the domain name. [v] The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vi]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The evidence is that the domain name has been offered for sale. There has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name. On the contrary, it has been used to redirect internet users to a competitor of Complainant and later has been used to direct users to a pornographic website. Panel finds that Complainant has made a prima facie case. [vii]
The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(i) above. The WHOIS registration information provided by Complainant shows that Respondent’s email address is used in connection with 1,009 domain names. The Panel cannot say whether these other domain names conflict with third party trademark rights but can infer that Respondent trades in domain names. The trademark is an arbitrary, coined term and is only of interest to Complainant or a competitor of Complainant. The domain name has been offered for sale. The redirection, first to a competitor then to a graphic adult site indirectly coerces Complainant to attempt to obtain the domain name itself from Respondent for a cost in excess of registration costs. In terms of paragraph 4(b)(i) of the Policy, The Panel finds that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for consideration in excess of Respondent’s out-of-pocket registration costs.[viii]
The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 31, 2017
[i] See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
[ii] See, for example, 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); 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.”).
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”; Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”
[v] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) finding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Upwork Global Inc. v. Shoaib Malik, FA 1654759 (FORUM February 3, 2016) finding that complainant provided freelance talent services, and that respondent competed 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; Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (FORUM July 7, 2017) holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”
[viii] See, for example, Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) where the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrated the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).).
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