Bittrex, Inc. v. Eduard
Claim Number: FA1809001809208
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Eduard (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bittrex-online.com> and <bjffrex.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Petter Rindforth, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2018; the Forum received payment on September 26, 2018.
On September 28, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bittrex-online.com> and <bjffrex.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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-online.com, postmaster@bjffrex.com. Also on September 28, 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 October 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a leading cryptocurrency exchange. Complainant has rights in the BITTREX trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,380,786, registered Jan. 16, 2018).
Respondent’s <bittrex-online.com> domain name is confusingly similar to Complainant’s trademark because Respondent includes the entire BITTREX trademark in the domain name plus a hyphen, the generic term “online,” and the generic top-level domain (“gTLD”) “.com.” Respondent’s <bjffrex.com> domain name is confusingly similar to Complainant’s trademark because Respondent replaces the letters “i” and “t” with the visually similar letters “j” and “f,” respectively, and adds the gTLD “.com.”
Respondent lacks rights and legitimate interests in the <bittrex-online.com> and <bjffrex.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s trademark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing or malware installation scheme.
Respondent registered and uses the <bittrex-online.com> and <bjffrex.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website which features Complainant’s BITTREX trademark in connection with index screens that Respondent uses in connection with a phishing or malware installation scheme. Further, Respondent had actual knowledge of Complainant’s rights in the BITTREX trademark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has established trademark rights in the BITTREX trademark, including:
- United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 5380786 BITTREX (word), registered on January 16, 2018 for services in classes 36 and 42
- European Union Trade Mark registration No. 016727109 BITTREX (word), registered on October 13, 2017 for goods and services in classes 9, 36 and 42
- United Kingdom national Trademark Registration No 00003231077 BITTREX (word), registered on May 15, 2017 for goods and services in classes 9, 36 and 42
Respondent registered the <bittrex-online.com> and <bjffrex.com> domain names on August 21, 2018.
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.
Complainant has rights in the BITTREX trademark based upon its registration of the trademark with the USPTO, as well as with EUIPO and IPO/UK.
The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark for purposes of 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.”).
Further, the Panel finds that the disputed domain name <bittrex-online.com> is confusingly similar to Complainant’s trademark because it includes the entire BITTREX trademark plus a generic term and a gTLD. The addition of a generic term and a TLD may be insufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis).
Here, Respondent incorporates the BITTREX trademark in its entirety and adds the generic term “online”. The said generic term is in fact related to Complainant’s online services, and – if considered at all – rather further refers to Complainant’s trademark and services than to than to differentiate from Complainant 's trademark. Therefore, the Panel concludes that the <bittrex-online.com> domain name is confusingly similar to Complainant’s BITTREX mark under Policy ¶ 4(a)(i).
Complainant claims that the disputed <bjffrex.com> domain name is confusingly similar to Complainant’s trademark because it only replaces the letters “i” and “t” with the visually similar letters “j” and “f,” respectively, and adds a gTLD. The Panel notes that substitution of letters may be insufficient to distinguish a disputed domain from a mark under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (“Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”).
The Panel note that generally on keyboards and keypads, the letters “t” and “f”, and “I” and “j” are placed close to each other - thereby may be a goal for typos. Further, the Panel agrees with Complainant’s conclusion that <bjffrex.com> in lowercase in a URL bar would appear to be <bittrex.com> unless the Internet user was looking closely at the URL. The Panel concludes that also the <bjffrex.com> domain name is confusingly similar to the BITTREX trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); 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”).
In view of Respondent's failure to submit a response, the Panel will 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 the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant argues that Respondent lacks rights and legitimate interests in the <bittrex-online.com> and <bjffrex.com> domain names because Respondent is not authorized or permitted to use Complainant’s BITTREX trademark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a 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.”).
The panel notes that the WHOIS of record identifies Respondent as “Eduard,” and no information in the record shows that Respondent was authorized to use Complainant’s trademark or is commonly known by the disputed domains.
Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <bittrex-online.com> and <bjffrex.com> domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain names to mislead users into thinking that their resolving webpages are affiliated with Complainant. The provided screenshots both display the message “Index of /” and what appear to be links of the words “Name,” “Last modified,” “Size,” and “Description.” Id. As such, the Panel finds that Respondent uses the disputed domain names to attempt to pass off as Complainant, and the Panel concludes that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Additionally, Complainant alleges that Respondent fails to use the <bittrex-online.com> and <bjffrex.com> domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because Respondent uses the domain names in furtherance of a phishing or malware installation scheme.
It is the Panels opinion that use of a disputed domain in connection with a phishing or malware scheme cannot be considered a bona fide offering under Policy ¶ 4(c)(i) or a legitimate use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
The Panel concludes that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <bittrex-online.com> and <bjffrex.com> domain names in bad faith because Respondent attempts to pass off as Complainant for commercial gain.
Use of a disputed domain to pass off as a complainant for commercial is indeed an example of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts).
Complainant provides screenshots of the disputed domain names’ resolving webpage featuring the message “Index of /” and four generic links. The Panel finds that Complainant’s evidence is sufficient, and concludes that Respondent uses the <bittrex-online.com> and <bjffrex.com> domain names to pass off as Complainant, thereby supporting a finding of bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent uses the <bittrex-online.com> and <bjffrex.com> domain names in bad faith because Respondent uses the domains in connection with a phishing or malware installation scheme. The Panel agrees with Complainant that such use further support a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the <bittrex-online.com> and <bjffrex.com> domain names.
Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith registration and use, and may be inferred through a respondent’s use of the mark in the disputed domain. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
Complainant claims that Respondent has demonstrated knowledge of the cryptocurrency industry based on Respondent’s registration of other domain names that infringe on other cryptocurrency-related marks, and has provided samples of such registrations made in the name of Respondent.
The Panel notes that although Complainant and Respondent are based in different countries (USA vs Russia), and that Complainant has trademark rights in USA, UK and European Union, but not in Russia, the registration and use of the disputed domain names by Respondent is a clear indication that Respondent had knowledge of Complainant’s trademark rights at the time of registration of <bittrex-online.com> and <bjffrex.com>, thereby supporting a finding of 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 <bittrex-online.com> and <bjffrex.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 2, 2018
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