BitPay, Inc. v. Egor Belugin / Onix group
Claim Number: FA1904001837665
Complainant is BitPay, Inc. (“Complainant”), represented by Stephen M. Vaughn of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Egor Belugin / Onix group (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitpay-exchange.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 conflict of interests in serving as Panelist in this proceeding.
Terry F Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2019; the Forum received payment on April 15, 2019.
On April 8, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bitpay-exchange.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 April 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2019 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@bitpay-exchange.com. Also, on April 19, 2019, 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 May 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest bitcoin payment processor and a leader in cryptocurrency and blockchain technology development.
Complainant holds a registration for the BITPAY service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,734,069, registered May 12, 2015.
Respondent registered the domain name <bitpay-exchange.com> on or about November 11, 2018.
The domain name is confusingly similar to Complainant’s BITPAY mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted to Respondent a license or other authorization to use the BITPAY mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent currently fails to make any active use of the domain name.
Respondent has no rights to or legitimate interest in the domain name.
Respondent’s use of the domain name has disrupted Complainant’s business.
Respondent’s use of the domain name has had the object of attracting Internet users to its resolving website, for its commercial gain, by creating a likelihood of confusion with Complainant’s BITPAY mark.
Respondent registered the domain name with false contact information.
Respondent knew of Complainant and its rights in the BITPAY mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.” But 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”).
Complainant has rights in the BITPAY service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO (or any comparable governmental authority) adequately proved its rights in that mark under Policy ¶4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Russia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bitpay-exchange.com> domain name is confusingly similar to Complainant’s BITPAY service mark. The domain name contains the mark in its entirety, with only the addition of the generic term “exchange,” which relates to Complainant’s business, plus a hyphen and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Starbucks Corporation d/b/a Starbucks Coffee Co. v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the domain name <starbucksreal.com> to be confusingly similar to a UDRP complainant’s STARBUCKS mark, because “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”).
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of an analysis of confusing similarity under Policy ¶ 4(a)(i)). As to the addition of a hyphen to the mark of another in creating a domain name, the punctuation neither adds nor subtracts meaning and the result is phonetically identical. And, as to the irrelevance of the addition of a gTLD, this is because every domain name requires a TLD.
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <bitpay-exchange.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <bitpay-exchange.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the BITPAY mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Egor Belugin / Onix Group,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name containing the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s GOOGLE mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent currently makes no active use of the <bitpay-exchange.com> domain name. It is well settled that a failure to make active use of a domain name is, in circumstances such as those here obtaining, itself a form of use. See, for example, the early pronouncement on the point in Telstra Corp. Ltd. v Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000):
It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used ....
It is equally well established that such inactive use is, in the circumstances described in the Complaint, neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate or noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
Those circumstances include not only that the domain name does not resolve to an active website, but also that Complainant’s BITPAY mark is widely known in commerce, that Respondent has taken steps to conceal its identity in registering the domain name, and that it is difficult, if not impossible, to conceive of any legitimate employment that might be made of the domain name given its provenance. See again Telstra Corp., supra. See also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a UDRP respondent’s non-use of disputed domain names demonstrated that that respondent was not using them to make 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)).
Finally, under this head of the Policy, Complainant alleges that Respondent has previously used the <bitpay-exchange.com> domain name in connection with a “phishing” scheme by which it sought to profit by obtaining sensitive personal information from unsuspecting Internet users under the guise of offering them employment with Complainant. It should go without saying that such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the policy. See, for example, Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014):
Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record amply demonstrates that Respondent has employed the disputed <bitpay-exchange.com> domain name to facilitate the operation of a fraudulent “phishing” scheme. This use of the domain name exhibits Respondent’s bad faith in registering and using the domain name. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum November 30, 2016):
Respondent uses the … domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
The record likewise shows that Respondent has filed false and misleading contact information in obtaining the registration of the <bitpay-exchange.com> domain name. This is further evidence of Respondent’s bad faith in registering and using the domain name. See White Oak Entertainment, LLC - DBA The Chateau at White Oak Vineyard v. Al Perkins, FA 1702045 (Forum December 12, 2016):
Respondent has provided false WHOIS information. In a commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption or to show the WHOIS information is correct. Therefore, this Panel is more than willing to find bad faith registration and use on these grounds.
It is also plain from the evidence that, owing to its undenied prominence in its industry, Respondent knew of Complainant and its rights in the BITPAY mark at the time Respondent registered the <bitpay-exchange.com> domain name. This too illustrates Respondent’s bad faith in registering the domain name. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding that, owing to the fame of a mark incorporated in a confusingly similar domain name, a UDRP respondent knew of a complainant and its rights in that mark when it registered the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bitpay-exchange.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 21, 2019
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