national arbitration forum

 

DECISION

 

Project Investors Inc. v. adam josh

Claim Number: FA1309001520968

PARTIES

Complainant is Project Investors Inc. (“Complainant”), represented by Eric Menhart of Lexero Law, Washington, D.C., USA.  Respondent is adam josh (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cryptsy.co>, registered with 101DOMAIN, INC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013. The Complaint was submitted in both Russian and English.

 

On September 24, 2013, 101DOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <cryptsy.co> domain name is registered with 101DOMAIN, INC. and that Respondent is the current registrant of the name.  101DOMAIN, INC. has verified that Respondent is bound by the 101DOMAIN, 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 September 25, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of October 15, 2013 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@cryptsy.co.  Also on September 25, 2013, the Russian language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

A. The Domain Name at Issue is Confusingly Similar to Marks Established by Complainant

 

            Complainant has established common law rights in the domain name at issue in this matter, and also holds priority for U.S. trademark rights in the mark by way of its formal trademark application.

 

            a. Complainant Has Rights in the mark “CRYPTSY”

 

            Complainant’s trade name rights are accrued under common law based on continuous use of the trade names at issue in the marketplace. Common law rights as applied to domain name disputes are well established. These rights are discussed in Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc., WIPO Case No. D2006-0703 (October 26, 2006):

 

Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Although the Complainant apparently does not have a registered trademark or service mark for the words ‘Aplus’ or ‘Aplus.Net’, this fact standing alone is not fatal to a finding of identity or confusing similarity under the Policy. According to paragraph 4(a)(i) of the Policy, common law rights are sufficient to support a domain name complaint. To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with complainant’s goods and services.

 

            See also Theodore Presser Company v. John Smith/WHOIS Protection, WIPO Case No. D2008-0549 (May 29, 2008); Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (December 12, 2000); Above All Advertising Inc. v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0775 (July 18, 2007); First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA 506772 (Nat. Arb. Forum August 22, 2005).

 

            UDRP Panels have found relevant evidence of secondary meaning to include “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Candy Direct, Inc. v. italldirect2u.com, FA 514784 (Nat. Arb. Forum August 22, 2005). Prior decisions have specifically relied on a “press release,” a “printout of web pages” and “use and advertising by the Complainant” to find secondary meaning in an unregistered mark. Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (June 30, 2004).

 

Complainant has acquired the requisite secondary meaning in its mark based on its exclusive use of the mark in commerce. First, Complainant registered the domain name CRYPTSY.COM on February 9, 2012. The Cryptsy.com exchange opened on May 20th, 2013.

 

Cryptsy is an Internet startup operated by Complainant Project Investors, Inc. focusing on the exchange of Crypto-Currency commonly known as “BitCoin” and its derivatives. Complainant currently services more than 60 different types of crypto-currency. Since its launch, the site has seen rapid growth in both customer base and trade volume. Complainant currently services approximately 8,000 registered users with a volume of over 15,000 trades per day. Since its launch, Complainant has continually owned and operated CRYPTSY.COM, during which it acquired a good reputation as a source for the services provided.

 

Second, the mark CRYPTSY is highly associated with Complainant’s website located at CRYPTSY.COM. A brief review of web search results for the term CRYPTSY demonstrates that the mark is almost exclusively used as reference to Complainant and CRYPTSY.COM. There are also numerous articles and discussions of CRYPTSY.COM on third party Internet websites and message boards hosted at, among others, cryptocointalk.com, bitcointalk.org, mybitalert.com, programmableweb.com, npmjs.org, github.com, coinjabber.com, coinboards.org, and more. Moreover, there are few, if any, other parties using the mark CRYPTSY for any other purpose than to refer to Complainant’s products and services.

 

Third, Complainant has applied for the standard character mark CRYPTSY with the United States Patent and Trademark Office. While Complainant is aware that a mere application is not conclusive proof of trademark rights, the application has the effect of further demonstrating Complainant’s bona fide use of the mark.

 

Fourth, Complainant invests substantial time, money and other resources in online interactions and social media. There are numerous subsections of Internet messages boards devoted entirely to discussion of Complainant’s services.  Complainant participates in many of these forums, using usernames such as “CRYPTSY SUPPORT.” Complainant also maintains an active social media presence. For example, Complainant maintains an active Twitter account associated with CRYPTSY.COM, using the mark CRYPTSY as the username, located at: https://twitter.com/cryptsy.

 

As discussed, Complainant has a demonstrated history of the consistent use and promotion of the mark CRYPTSY, and the brand is highly associated with Complainant’s services. Accordingly, Complainant has trademark rights in the mark CRYPTSY for purposes of the Policy.

 

Finally, Complainant notes that prior panels have taken into account “the fact that the Respondent has not challenged the Complainant's evidence or its claim to unregistered trade mark rights.” La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate, WIPO Case No. D2009-0534, (July 1, 2009). Complainant would urge the present panel to follow suit if Respondent fails to challenge Complainant’s showings herein.

 

b. Domains at Issue are Confusing Similarity to the Mark

 

The test of confusing similarity under the UDRP is limited to the consideration of the disputed domain name and the trademark, without reference to other issues. Microsoft Corporation v. WDW Inc., et. al., D2002-0412 (WIPO July 1, 2002). Furthermore, it is well established that the addition of a gTLD is irrelevant when distinguishing a disputed domain name from a mark. See, e.g. Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000).

 

In the present matter, the infringing domain at issue CRYPTSY.CO is identical to the Complainant’s mark CRYPTSY.COM except for the gTLD. Accordingly, there is confusing similarity for purposes of the Policy.

 

B. Respondent Has No Rights or Legitimate Interests in the Domain Names

 

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii). The Respondent fails to meet any of these standards, as demonstrated by the factual background surrounding this matter.

 

First, Respondent does not use the infringing domain names in a bona fide offering of goods and services. To the contrary, the domain name has been used maliciously as a honey pot for phishing attempts. Respondent registered the domain name CRYPTSY.CO on September 7, 2013. Shortly thereafter, Respondent created an infringing site,[1] hosted at CRYPTSY.CO that appeared to be nearly identical to Complainant’s site, CRYPTSY.COM. Respondent created a user form that was designed to capture CRYPTSY.COM’s username and password information, and, on information and belief, intended to use the information to log in to CRYPTSY.COM and transfer value from the compromised accounts.

 

Upon noticing this behavior, Complainant immediately contacted the registrar of CRYPTSY.CO, 101Domain, Inc. to complain about the behavior. Susan Jessup, Director of Registrar Operations for 101Domain, Inc. exchanged several communications with Complainant. In the correspondence, Ms. Jessup specifically noted that “because of multiple violations of phishing, we have been able to lock the customer account.” Id. While the account remains locked, the infringing domain CRYPTSY.CO is still under Respondent’s control.

 

In sum, Complainant is not aware of any demonstrable preparations to use the domain names for any offering of bona fide products or services that would give Respondent rights under the policy. To the contrary, the record appears to reflect that the Respondent appeared to use the domain name to maliciously target CRYPTSY.COM user accounts.

 

Second, Respondent has no history of being commonly known by the domain names in question. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panels found that the respondent was not commonly known by a disputed domain name based on the WHOIS information and the other evidence in the record. The WHOIS record demonstrates that respondent has referred to himself as “Adam Josh.” Complainant is unaware of the use of the mark CRYPTSY to refer to Respondent prior to the registration of the infringing domain name. Because “Adam Josh” is not part of the domain name at issue, the Respondent is accordingly not commonly known by the domain name for purposes of the Policy.

 

Finally, there is no legitimate non-commercial or fair use of the infringing domain names. As demonstrated, the websites maintained at the infringing domain name were clear attempts at malicious phishing campaigns. Prior panels have found that “registering a domain name in such circumstances, knowing of the potential for confusion, cannot give rise to a right or legitimate interest in respect of the domain name in question.” Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651 (September 5, 2002).

 

Accordingly, Respondent has no rights or legitimate interests in the domain names.

 

C. Respondent Registered and Used the Domain Names in Bad Faith

 

As demonstrated, Respondent’s goal in registration of the domain names was to trade on the good name of the Complainant’s mark by using an identical name and implementing a malicious phishing scheme. Prior panels have routinely held that using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 (August 15, 2005). In the present case, Respondent intentionally aimed to attract users of CRYPTSY.COM to CRYPTSY.CO for purposes of stealing user name and information from Complainant’s eight thousand users. The present matter is therefore consistent with prior UDRP decisions.

 

Prior panels have also routinely held that they may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity or failure to reply to a complaint. Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (July 10, 2009) (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). On information and belief, the address provided in the WHOIS information, 78 Edgware Road, London, NW6 4AB is not an actual physical street address in London. This fact is further evidence of bad faith behavior.

 

Finally, there “is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys, FA 124506. As demonstrated, Respondent almost certainly had actual knowledge of Complainant and its marks when it registered a domain name identical to Complainant’s mark over a year after Complainant’s domain name registration, and implemented a malicious phishing attempt. Without knowledge of Complainant, its marks, and its products, Respondent would have had no motivation to register the infringing domain name. This fact is additional evidence of bad faith behavior.

 

Given all the foregoing, the domain names are registered and used in bad faith and demand transfer to the Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove the following three elements to obtain an order canceling or transferring a domain name:

 

(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(e), 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.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).

 

Identical and/or Confusingly Similar

Although Complainant does not have a trademark registration for the CRYPTSY mark, Complainant claims it has common law rights in the CRYPTSY mark. Complainant is not required to register its mark with a trademark agency under Policy ¶4(a)(i) as long as it demonstrates common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶4(a)(i)).

 

Complainant’s has rights in the CRYPTSY mark because the mark has acquired the requisite secondary meaning based on its exclusive use in commerce. CRYPTSY is an Internet startup focusing on the exchange of crypto-currency commonly known as “BitCoin” and its derivatives. Complainant currently services more than 60 different types of crypto-currency.  Complainant registered its domain name <cryptsy.com> on February 9, 2012. Complainant’s <cryptsy.com> exchange opened on May 20, 2013. Complainant’s CRYPTSY mark is closely associated with Complainant’s website at <cryptsy.com>. Complainant has applied for the standard character mark CRYPTSY with the USPTO (Serial Number 86,026,019, filed August 1, 2013). Complainant has invested substantial time, money, and other resources in online interactions and social media and maintains an active social media presence. The Panel finds Complainant has adequately proven a secondary meaning in the CRYPTSY mark, establishing its common law rights in the mark under Policy ¶4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).

 

Complainant claims the infringing domain at issue <cryptsy.co> is identical to Complainant’s mark CRYPTSY.COM except for the top-level domain (“TLD”) “.co,” which is a country-code top-level domain (“ccTLD”) abbreviation for “Colombia.” Respondent’s addition of a ccTLD is irrelevant to a Policy ¶4(a)(i) determination. See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Respondent’s <cryptsy.co> domain name is identical to Complainant’s CRYPTSY mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).

 

Complainant claims Respondent has no history of being commonly known by the domain name in question. The WHOIS record demonstrates Respondent has referred to itself as “Adam Josh.” Respondent provides no evidence showing Respondent is known by the <cryptsy.co> domain name. The Panel therefore finds Respondent is not commonly known by the <cryptsy.co> domain name pursuant to Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant claims the <cryptsy.co> domain name has been used maliciously as a “honey pot” for phishing attempts. Respondent registered its disputed domain name on September 7, 2013. Shortly after the domain name’s registration, Respondent created a counterfeit web site connected with the domain name, which created a user form that was designed to capture Complainant’s customers’ <cryptsy.com> username and password information.  Respondent intended to use the information to log in to <cryptsy.com> and transfer value from the compromised accounts to itself. In Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006), the panel held respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services 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). Respondent’s use of the <cryptsy.co> domain name to conduct a phishing scheme is not a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent intentionally attracts users of Complainant’s <cryptsy.com> domain name to the website associated with the <cryptsy.co> domain name for purposes of stealing user name information from Complainant’s roughly 8,000 users. Respondent presumably financially gains from diverting users from Complainant’s website to its own website (and transferring their notional currency to Respondent or Respondent’s agents). A respondent who uses an infringing domain name to implement a phishing scheme for commercial gain registered and uses the domain name in bad faith under Policy ¶4(b)(iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Therefore, Respondent has registered and is using the <cryptsy.co> domain name in bad faith under Policy ¶4(b)(iv).

 

Complainant claims Respondent almost certainly had actual knowledge of Complainant and its CRYPTSY marks when it registered a domain name identical to Complainant’s mark over a year after Complainant’s domain name registration. This would seem obvious Respondent knew about Complainant’s mark because Respondent copied Complainant’s web site and then commenced a shell game to move the web hosting among various companies to prevent Complainant from shutting Respondent down.  This means Respondent registered the <cryptsy.co> domain name in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Furthermore, Respondent’s use of false registration information supports a finding of bad faith registration and use of the disputed domain name.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <cryptsy.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, November 5, 2013

 

 



[1] Regrettably, Complainant was not able to obtain a screenshot of the infringing site during the time of infringement, because all efforts were concentrated on stopping the security concern immediately. Despite Complainant’s efforts, there do not appear to be any archived versions of the site available for inclusion herein.

 

 

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