BitPay, Inc. v. Osasu Eribo
Claim Number: FA2212002025093
Complainant is BitPay, Inc. (“Complainant”), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia. Respondent is Osasu Eribo (“Respondent”), NG.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitpayexpertoptionmining.com>, registered with Porkbun 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 22, 2022; Forum received payment on December 22, 2022.
On Dec 22, 2022, Porkbun LLC confirmed by e-mail to Forum that the <bitpayexpertoptionmining.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 December 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2023 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@bitpayexpertoptionmining.com. Also on December 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it is the world’s largest Bitcoin payment processor and an award-winning, nationally-recognized leader in cryptocurrency and block chain technology, including block chain retail, ecommerce, billing, and donation tools using Bitcoin and Bitcoin Cash. Complainant has been continuously providing cryptocurrency services to merchants since at least 2011. Complainant’s services provide merchants with the ability, among other things, to accept cryptocurrency from their customers. Complainant uses the BITPAY mark in connection with these services. Since its inception, Complainant has processed well-over $5 billion US Dollars in payments for thousands of businesses worldwide, and it has successfully partnered with Mastercard to provide the first ever BITPAY-branded prepaid card for cryptocurrency users in the United States, and has also partnered with Apple Wallet, Google Pay, and Samsung Pay to provide merchant services. Complainant has rights in the BITPAY mark through its registration in the United States in 2015.
Complainant alleges that the disputed domain name is identical or confusingly similar to its BITPAY mark as it incorporates the mark in its entirety, merely adding the generic/descriptive term “expert option mining” along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITPAY mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, the resolving website displays Complainant’s mark and logo, mimics Complainant’s legitimate website, and contains material copied directly from Complainant’s website, including background on the company, its mission statement, investors, awards and memberships, executive team, board of directors, and advisors. The resolving website purports to offer Complainant’s services and invites users to provide personal and financial information in order to join “trading plans” in furtherance of a fraudulent phishing scheme. Respondent’s address and phone number as displayed on the resolving website are fake. The resolving website also includes fake user reviews: a reverse image search for the headshots of the supposed “reviewers” shows that the images were actually sourced from online retail stores.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith, in furtherance of a fraudulent phishing scheme. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITPAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BITPAY and uses it to provide Bitcoin-related services.
Complainant’s rights in its mark date back to at least 2015.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and logo, and mimics Complainant’s legitimate website; it displays a fake address and telephone number and fake reviews; it invites users to enter personal and financial information in order to join “trading plans”.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates Complainant’s BITPAY mark in its entirety, merely adding the generic/descriptive term “expert option mining” along with the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a generic term and the “.com” gTLD to a mark is insufficient to distinguish the domain name from the mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Here, the WHOIS information or record identifies the registrant as “Osasu Eribo”. Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Both the disputed domain name itself, and the content of the resolving website, falsely suggest that they are associated with the Complainant. That is not a fair or legitimate use of the disputed domain name. Indeed, according to paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner …”. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, D2014-1359 (WIPO, Oct. 28, 2014). Consequently the Panel finds that Respondent has failed to use the disputed domain name to make bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that the resolving website is used in furtherance of a fraudulent phishing scheme, but it does not present evidence of any actual phishing attacks. However, Complainant does present ample evidence indicating that the resolving website was likely created to further a phishing scheme: it mimics Complainant’s legitimate website, it invites users to provide personal and financial information to join “trading plans”, it contains dead links, and it displays a fake address and telephone number as well as fake reviews.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate.
The Panel finds, on the balance of the evidence before it, that the resolving website is intended to be used for phishing. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to engage in phishing is not a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Therefore the Panel finds, on this ground also, that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
As already noted, consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”). Thus the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Further, also as already noted, the resolving website is used in furtherance of a phishing scheme. Under Policy ¶ 4(a)(iii), engaging in phishing is evidence of bad faith registration and use. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Thus the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo, and material copied from Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). 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.”); see also 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.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use 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 <bitpayexpertoptionmining.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 19, 2023
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