Eris Digital Holdings, LLC v. BitMex / Skye Lattin / Sammy Smart / Zey Hoven
Claim Number: FA2203001989094
Complainant is Eris Digital Holdings, LLC (“Complainant”), represented by Andrew J. Avsec of Crowell & Moring LLP, Illinois, USA. Respondent is BitMex / Skye Lattin / Sammy Smart / Zey Hoven (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <erisx.live>, <erisxa.com>, <erisxares.store>, and <erisxdigitaltrading.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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2022; the Forum received payment on March 21, 2022.
On March 22, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <erisx.live>, <erisxa.com>, <erisxares.store>, and <erisxdigitaltrading.com> domain names (the Domain Names) are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 March 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 18, 2022 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@erisx.live, postmaster@erisxa.com, postmaster@erisxares.store, postmaster@erisxdigitaltrading.com. Also on March 29, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles a. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES AND RESPONDENTS
The Complaint names four persons as Respondents and relates to four Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that all four Domain Names are effectively controlled by the same person or entity. It notes that all four Domain Names were registered with the same registrar during the period from November 21, 2021 through March 18, 2022, and that three of them reside on the same server. These allegations are supported by the WHOIS information submitted as complaint Exhibits F through I inclusive. The information furnished to the Forum by the registrar states that the the <erix.live> Domain Name was registered to “Skye Lattin,” that the <erixa.com> Domain Name was registered to “Sammy Smart,” that the <erisares.store> Domain Name was registered to “Zey Hoven,” and that the <erixdigitaltrading.com> Domain Name was registered to “BitMex.” While all of these names are different, it is clear that whoever registered the Domain Names provided false information to the registrar. Some of the registrant names belong to well-known persons or entities that would not have registered any of these Domain Names, and the others are simply made-up and meaningless. The addresses given for all of the registrants are non-existent or nonsensical, e.g., the address for BitMex is given as “USA, USA, Nigeria.” The pattern demonstrated by the style and content of these addresses suggests common ownership and control.
The WHOIS reports for the Domain Names submitted as Complaint Exhibits F through I inclusive list “Privacy service provided by Withheld for Privacy ehf” as the registrant organization of all four of the Domain Names. Based upon the fact that all four Domain Names were registered with the same registrar within a fairly short period of time and used the same privacy service, and the common pattern of false registrant names and addresses, the Panel finds that all four Domain Names are registered to the same person or entity or are under common control, and will proceed as to all of them. Caterpillar v. Arendt, FA1805001789701 (Forum July 2, 2018), (“The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use Cloudfare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder.”). References to “Respondent” in this Decision, while in the singular, refer to all named Respondents.
A. Complainant
Complainant provides financial services, including the trade, clearance, or exchange of digital assets. It has rights in the ERISX mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <erisx.live>, <erisxa.com>, <erisxares.store>, and <erisxdigitaltrading.com> Domain Names are confusingly similar to Complainant’s ERISX mark, as they incorporate the mark in its entirety, merely adding letters and generic terms in three of the four cases, and generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the Domain Names. It is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses them for a credentials harvesting scheme to defraud and steal from unsuspecting consumers, Respondent is not commonly known by the Domain Names, Respondent is not affiliated with Complainant and Complainant has not licensed Respondent to use its ERISX mark.
Respondent registered and is using the Domain Names in bad faith to pass off as Complainant in a fraudulent scheme, on information and belief, to harm Complainant and its customers through the installation of malware onto Complainant’s systems, and to harvest private credentials from Complainant’s customers for purposes of fraud and theft. Respondent had actual knowledge of Complainant and its rights in the ERISX mark when it registered the Domain Names and offers similar services.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The ERISX mark was registered to Eris Exchange Holdings LLC with the USPTO (Reg. No. 6,060,634) on May 19, 2020 and was subsequently assigned to Complainant (USPTO registration certificate and TDSR status printout included in Complaint Annex D). Complainant’s registration of its mark with the USPTO establishes it rights in that mark for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <erisx.live>, <erisxa.com>, <erisxares.store>, and <erisxdigitaltrading.com> Domain Names are confusingly similar to Complainant’s ERISX mark. They all incorporate the mark in its entirety. Three of them add a letter or a generic, descriptive term, and all of them add a gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “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.”), OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the ERISX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it has not been commonly known by the Domain Names, (ii) It is not affiliated with Complainant and Complainant has not authorized Respondent to use its mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses them for a credentials harvesting scheme to defraud and steal from unsuspecting consumers. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrar states that the <erix.live> Domain Name was registered to “Skye Lattin,” that the <erixa.com> Domain Name was registered to “Sammy Smart,” that the <erisares.store> Domain Name was registered to “Zey Hoven,” and that the <erixdigitaltrading.com> Domain Name was registered to “BitMex.” The WHOIS reports submitted as Complaint Annexes F through H inclusive list “REDACTED FOR PRIVACY / Privacy service provided by Withheld for Privacy” as the registrant of the other three Domain Names. None of these names bears any resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the Domain Names.
Complainant states that Respondent is not affiliated or associated with it and that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
Amended Complaint Annex K is a screenshot of the web site resolving from the <erisxdigitaltrading.com> Domain Name. It prominently features the Complainant’s mark, and advertises services including the trading of cryptocurrencies, stock indexes, commodities and Forex. It offers the visitor an opportunity to sign up for accounts, soliciting the visitor’s name and email address. Complainant alleges that the site promotes a credentials harvesting scheme targeting Complainant’s customers to defraud and steal their personal and financial information. Complainant also alleges that the site has been used to install malware within Complainant’s environment. That could well be the case but there is no evidence of credentials harvesting (“phishing”), or the installation of malware appearing in Complaint Annex K or in any other evidence before the Panel. Nevertheless, the site does hold itself out to be that of Complainant and purports to offer the same kinds of services as Complainant. It is clear that Respondent’s web site is designed and intended to convey the impression that it is either sponsored by Complainant or is that of Complainant itself. Passing off and claiming to offer a complainant’s services is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The foregoing, of course, applies only to the <erisxdigitaltrading.com> Domain Name. Complainant alleges on information and belief that the other Domain Names are used in the same way, but it submitted no evidence of that. It states that it has “not viewed the webpages available at these domains for fear of further malicious activity.” This is understandable but it leaves the Panel with no factual basis for a finding as to what uses if any Respondent is making of the other Domain Names. Without this, there can be no finding that the Domain Names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. In short, Complainant has failed to establish a prima facie case of no rights or legitimate interests as to these domains.
The evidence furnished by Complainant establishes the required prima facie case as to the <erisxdigitaltrading.com> Domain Name. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in that Domain Name. Complainant has failed to establish the required prima facie case as to the other Domain Names, however, and the Panel cannot find that Respondent has no rights or legitimate interest in them.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 which 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis as to the <erisxdigitaltrading.com> Domain Name also supports a finding of bad faith registration and use of that Domain Name, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by using that Domain Name to pass off as Complainant and offering to sell services advertised as those of Complainant, Respondent is using it to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant. The evidence does not establish whether Respondent is actually selling or providing any services or fraudulently representing that it does, collecting money from the customer and then not delivering the services, or as Complainant suggests using the Domain Name in connection with a fraudulent phishing program. Under either scenario, however, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As discussed above, Respondent is using the Domain Name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered all of the Domain Names in November and December of 2021 and February and March of 2022 (Complaint Annexes F through I inclusive show creation dates). Complainant’s ERISX mark had been used by it in commerce for more than three years by that time. More important, Respondent copied that mark exactly into the Domain Names and impersonated Complainant, advertising the same types of services offered by Complainant. In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the <erisxdigitaltrading.com> Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy as to the <erisxdigitaltrading.com> Domain Name, the Panel concludes that relief shall be GRANTED as to that Domain Name.
Complainant having failed to establish all three elements required under the Policy as to the <erisx.live>, <erisxa.com> and <erisxares.store> Domain Names, the Panel concludes that relief shall be DENIED as to those Domain Names.
Accordingly, it is Ordered that the <erisxdigitatrading.com> Domain Name be TRANSFERRED from Respondent to Complainant, and that the <erisx.live>, <erisxa.com> and <erisxares.store> Domain Names REMAIN WITH REPONDENT. As the Order denying relief as to the last three named Domain Names is based upon a lack of evidence bearing upon one of the required elements of the case, it is issued without prejudice to the right of Complainant to commence another UDRP proceeding involving these Domain Names supported by competent evidence.
Charles A. Kuechenmeister, Panelist
April 27, 2022
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