iFinex Inc. v. zhujiangtao / Super Privacy Service c/o Dynadot
Claim Number: FA1802001770841
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn LLP, Washington, USA. Respondent is zhujiangtao / Super Privacy Service c/o Dynadot (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bifinex.com> and <bitfienx.com>, registered with Dynadot, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on February 7, 2018; the Forum received payment on February 7, 2018.
On February 8, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <bifinex.com> and <bitfienx.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@bifinex.com, postmaster@bitfienx.com. Also on February 16, 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 March 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Both domains (1) redirect traffic to the same website: <binance.com>; (2) were registered through Dynadot LLC; (3) use Amazon Technologies Inc. as the IP location, (4) use IP Address 52.0.7.30 as their IP Address. and (5) had WHOIS updates within one day. Given the circumstances of this case, the Panel is persuaded both domain names are controlled by the same person or entity.
Complainant requests the domain names be transferred from Respondent to Complainant.
A. Complainant
Pursuant to Supplemental Rule 4(c), Complainant believes that Respondent 2 is a privacy service and effectively an alias for Respondent 1 (collectively, Respondents 1 and 2 are referred to herein as the “Respondent”). Therefore, the Domains are effectively controlled by the same person and/or entity operating under several aliases. Pursuant to UDRP Rules Paragraph 3(c), a single UDRP proceeding is appropriate because the Domains are effectively registered by the same holder.
Complainant has provided the following evidence that the Domains share a common ownership and control:
· Both Domains are used to redirect traffic to the same website: binance.com.
· Both Domains were registered through Dynadot LLC as the registrar.
· Both Domains use Amazon Technologies Inc. as the IP Location.
· Both Domains use IP Address 52.0.7.30 as their IP Address.
· Both Domains had WHOIS updates within one day (January 18, 2018 for the Bitfienx.com Domain and January 19, 2018 for the Bifinex.com Domain).
This type of evidence – including the use of Super Privacy Service c/o Dynadot as a registrant name - has previously been accepted to demonstrate one respondent operating under several aliases. See, e.g., PayPal, Inc. v. Super Privacy Service c/o Dynadot / JVPAYS Ltd., FA 1703001722305 (Forum May 1, 2017) (evidence concerning the purpose and content of the websites, and specifically the registrant’s use of Super Privacy Service c/o Dynadot as a privacy provider, used to determine that “the domain names [were] commonly owned/controlled by a single [r]espondent who [was] using multiple aliases”); InqPharm Europe Limited v. takesi kondou / toshikatsu awazu / masahiro katayama, FA1701001712217 (Forum Feb. 28, 2017) (evidence concerning a common registrar and other WHOIS details used to determine that “the disputed domain names [were] commonly controlled by a single [r]espondent who [was] using multiple aliases”).
Given all of the above, including Respondent 2’s status as a privacy service that has expressly been held to be an alias for another domain registrant, it is clear that the Domains are owned by a single Respondent using multiple aliases. Accordingly, Complainant is submitting an additional fee of $130 pursuant to Supplemental Rule 17(a)(i) and respectfully requests that its Complaint continue concerning both Domains, which are collectively owned by one Respondent.
Trademark/Service Mark Information: Rule 3(b)(viii).
Examples of Complainant’s trademark filings (collectively, the “Filing(s)”) for its BITFINEX and BITFINEX Logo trademarks in Class 36, and BITFINEX INVEST IN THE FUTURE & Leaf Design trademark in Classes 36 and 42 (each a “Mark,” and collectively, the “Marks”) in Hong Kong, the European Union, the Russian Federation, China, India, Canada, and the United States. Complainant’s Marks are well-known in the financial services industry, and Complainant’s BITFINEX trading platform is the “world’s largest and most advanced bitcoin trading platform.” Complainant first used its BITFINEX Mark, BITFINEX INVEST IN THE FUTURE, and BITFINEX INVEST IN THE FUTURE & Leaf Design Marks at least as early as 2013, and first used its BITFINEX Logo Mark at least as early as 2016. In addition, Complainant first registered its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark on April 15, 2015.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
A. Jurisdictional Basis for the Administrative Proceeding
[7.1] This dispute is properly within the scope of the UDRP, and the Forum has jurisdiction to decide the dispute, because the registration agreement pursuant to which the Domains are registered incorporates the UDRP.
[7.2] Further, in accordance with the UDRP, ¶4(a), Respondent is required to submit to a mandatory administrative proceeding because:
UDRP, ¶4(a)(i) The Domains are identical or confusingly similar to a trademark in which Complainant has rights; and
UDRP, ¶4(a)(ii) Respondent has no rights or legitimate interests in the Domains; and UDRP, ¶4(a)(iii) The Domains were registered and are being used in bad faith.
B. Nature of the Dispute
i. Complainant and its Mark
[7.3] Complainant has used Complainant’s BITFINEX Marks since at least as early as 2013 in connection with financial services in Class 36. Complainant’s BITFINEX, BITFINEX INVEST IN THE FUTURE, and BITFINEX INVEST IN THE FUTURE & Leaf Design Marks began use at least as early as October 25, 2013. Complainant’s BITFINEX Logo Mark began use at least as early as June 27, 2016. Presently, Complainant’s Marks are used around the globe, including in Asia (including Hong Kong, India, China, and the Russian Federation), in North America (including in the United States and Canada), and in Europe (including in the European Union) in connection with financial services in Class 36.
[7.4] Complainant owns a trademark registration for its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark in Hong Kong, which registered on April 15, 2015 under Registration No. 303,372,804 (“Registration”).
[7.5] Complainant’s BITFINEX and BITFINEX Logo Marks have been filed in Asia (including Hong Kong, China, India, and the Russian Federation), in North America (including in the United States and Canada), and in Europe (including in the European Union) in connection with financial services in Class 36.
[7.6] Through Complainant’s extensive use and substantial investments in promoting its Marks over the course of approximately four (4) years, the Marks have developed substantial goodwill and a positive reputation. Complainant’s services are available in dozens of jurisdictions around the globe.
[7.7] Complainant’s bitfinex.com domain (“Complainant’s Domain”) was registered by Complainant’s predecessor in interest on October 11, 2012. Examples of Complainant’s use of its Marks, including current screenshots from Complainant’s bitfinex.com website (“Complainant’s Site”), are provided.
[7.8] In less than four (4) years, Complainant became “the world’s largest and most advanced bitcoin trading platform.” As of November 2017, Complainant was the largest BTC-USD trading exchange in the world, capturing in excess of fifty percent (50%) of worldwide daily BTC-USD trading volume.
[7.9] Complainant’s Mark is an invented, fanciful trademark, as evidenced by the fact that Complainant is the only party who has filed a trademark containing the letterstring “bitfinex” before the United States Patent and Trademark Office.
ii. Respondent’s Registration and Use of the Domain
[7.10] Respondent registered the Bifinex.com Domain on August 4, 2016 (“Bifinex.com Domain Registration Date”) and registered the Bitfienx.com Domain on May 30, 2017 (“Bitfienx.com Domain Registration Date”) (collectively, the “Domain Registration Dates”).
[7.11] On information and belief, the Domains are both used to redirect Internet traffic to binance.com (“Binance Site”).
[7.12] Internet users see a different Binance Site depending on which web browser they use to try to access the Domains. If a Google Chrome Internet browser is used, the Internet user will be redirected from the Domains to Binance.com and will see a substantive Binance.com landing page featuring a virtual currency / cryptocurrency exchange platform. This version of the Binance Site is directly competitive to Complainant’s Site and Complainant’s business: both are virtual currency trading and exchange platforms, and both offer the same types of virtual currencies, such as the BITCOIN cryptocurrency.
[7.13] However, if a Microsoft Internet Explorer Internet browser is used, the Internet user will be redirected from the Domains to Binance.com and instead will see a Chinese language site, requesting that the user either download a Google Chrome file or a Microsoft Internet Explorer file (“Binance Downloads”).
[7.14] The Binance Downloads are full of malware and other malicious activity, as demonstrated by the Hybrid-Analysis.com report run on the Binance Downloads on January 25, 2018 (“Malware Report”). Among other findings, the Malware Report found six (6) Malicious Indicators, thirty-three (33) Suspicious Indicators, and one (1) Malicious File. Respondent’s Binance Downloads include a file named “AdWare.Elex,” which presumably permits Respondent to send – and monetize – advertisements on infected electronic devices.
C. Legal Grounds Proving Domains Violate the UDRP
[7.15] The Domains should be transferred to Complainant pursuant to the UDRP because (1) Complainant has rights in its Mark, and the Domains are confusingly similar to Complainant’s Mark, (2) Respondent has no rights or legitimate interests in the Domains, and (3) Respondent registered and is using the Domains in bad faith.
i. The Domains are Confusingly Similar to Complainant’s Mark
[7.16] As demonstrated above, Complainant owns enforceable rights in the invented, fanciful, well known BITFINEX Mark.
[7.17] Complainant’s rights in its Mark pre-date the registration dates of the Domains. Complainant’s rights in its Marks date back at least as early as 2013. Respondent registered the Domains in 2016 and 2017 and subsequently used the Domains to redirect Internet traffic to (a) a Binance Site that is directly competitive to Complainant’s Site and business through the Google Chrome Internet browser, and (b) the Binance Downloads, which appears to feature malware through the Microsoft Internet Explorer Internet browser.
[7.18] The Domains are confusingly similar to Complainant's BITFINEX Mark. A domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark." See, e.g., Moneytree, Inc. v. Cyberwire, LLC, FA0708001059480 (Forum Sept. 28, 2007) (adding a generic term for complainant's offerings and/or a top-level domain is irrelevant to whether a domain name is likely to cause confusion with complainant's trademark). Generally, a user of a mark may not avoid likely confusion by appropriating another's mark and simply adding a descriptive or non-distinctive term to it. See, e.g., Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) ("[t]he dominant identifying characteristic of the domain name is the word 'Westfield'"). It is that word which conveys the dominant impression that is likely to cause confusion. Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after a distinctive trademark were confusingly similar). In determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).
What is important in the confusingly similar analysis is not whether Respondent’s Domains are identical to Complainant’s Marks, but rather, whether one distinctive component of the Domains are similar in sound, appearance, and connotation to Complainant’s Marks. See, e.g., Inter-IKEA Systems B.V. v. Technology Education Center, D2000-0522 (WIPO Aug. 7, 2000) (the addition of “e” to the IKEA trademark in the <e-ikea.com> domain was “insignificant and …therefore the domain name is confusingly similar to the [c]omplainant’s trade mark IKEA”); (Metabolife International v. Robert Williams, D2000-0630 (WIPO Dec. 9, 2000) (because “METABOLIVE is substantially identical letter-by-letter to the [c]omplainant’s [METABOLIFE] trademark…[t]he [p]anel finds that there is such similarity in sound, appearance, and connotation between METABOLIFE® and the said [d]omain [n]ame (Metabolive) as to render said [d]omain [n]ame confusingly similar to [c]omplainant’s trademark”); Yahoo! Inc. v. David Murray, D2000-1013 (WIPO Nov. 17, 2000) (“the [p]anel is satisfied that <yawho.com> is confusingly similar to <yahoo.com> because it … differs by only one letter”).
The addition of a single letter is insufficient to avoid a finding of confusing similarity. See, e.g., Hotwire, Inc. v. Webatopia Marketing Limited, D2012-1985 (WIPO Nov. 23, 2012) (<houtwire.com> domain held confusingly similar to HOTWIRE trademark, despite addition of a single letter, because “the disputed domain name and the Complainant’s trade marks differ only by the addition of one letter…there can be no doubt that the disputed domain name is identical or confusingly similar to Complainant’s trade marks”).
Like Hotwire, Respondent’s bifinex.com Domain differs from Complainant’s Mark solely by the subtraction of one letter (“t” is missing from “Bitfinex”). This minor difference is insufficient to avoid confusion between Complainant’s Mark and the Bifinex.com Domain. In addition, Respondent’s bitfienx.com Domain merely rearranges the order of Complainant’s Mark by switching the order of “e” and “n” to create “bitfienx” instead of “bitfinex.” This minor typosquatting difference is also insufficient to avoid confusion between Complainant’s Mark and the Bitfienx.com Domain.
Here, there is no question that Respondent’s Domains are confusingly similar to Complainant’s BITFINEX Mark because the Domains feature Complainant’s invented, fanciful BITFINEX brand and merely (a) subtracts the letter “t” or (b) switches the order of the letter’s “n” and “e,” both in a typosquatting manner. Complainant’s Mark and Complainant’s Domain (Bitfinex.com) and Respondent’s Domains (Bifinex.com and Bitfienx.com) are nearly identical and confusingly similar.
This case is similar to the Telstra Corporation Limited v. Nuclear Marshmallows, D2000- 0003 (WIPO Feb. 18, 2000) and Research in Motion Limited v. MumbaiDomains, D2009-0322 (WIPO May 5, 2009) cases. In Telstra, an invented, fanciful trademark (TELSTRA) was involved. The Panel held that “the fact that the word <TELSTRA> appears to be an invented word, [it] is not one traders would legitimately choose unless seeking to create an impression of an association with the [c]omplainant.” As such, the Panel went on to find the domain <telstra.org> violated the complainant’s rights under the UDRP. In Research in Motion, the respondent merely added one additional letter to various domains featuring the BLACKBERRY brand, including the <blackbberry.com> domain (addition of “b”) and <bllackberry.com> domain (addition of “l”). The Panel found that “adding or removing letters to a domain name is not sufficient to escape the finding of similarity.”
Similarly, BITFINEX is an invented, fanciful trademark. Respondent would not have chosen this identical trademark as the cornerstone of the Domains if not for the fact that doing so would create confusion with Complainant’s Mark and services. This is further evidenced by the fact that the Domains are both used to redirect Internet traffic to the same Binance Site, and in both instances, Internet users are directed to a different Binance Site depending upon the web browser used. These identical actions by both Domains are no coincidence.
Respondent’s motivation for this redirection appears to be financial gains. Through the Google Chrome Internet browser, Respondent uses Complainant’s Mark to attract Internet users to a directly competitive cryptocurrency platform at the Binance Site. Through the Internet Explorer Internet browser, Respondent uses Complainant’s Mark to attract Internet users to a portal that features suspicious downloads and likely monetizes them through the installation of malware, including a malicious file named “AdWare.Elex.” Regardless of Respondent’s motivation, like Telstra and Research in Motion, Respondent’s typosquatting Domains are confusingly similar to Complainant’s Mark. See, e.g., Andrey Ternovskiy dba Chatroulette v. Registration private, Domains by Proxy, LLC / I S, ICS INC (WIPO Nov. 8, 2016) (“[t]he minor variation to [a trademark] is clearly a deliberate misspelling and a typical example of typosquatting which has been frequently condemned in many decisions under the Policy”).
Staples, Inc., et. al. v. John Sansone, D2004-0018 (WIPO Feb. 26, 2004) is also instructive. In Staples, the respondent replaced the letter “s” in complainant’s STAPLES trademark with the letter “a” in registering the <ataples.com> domain. The panelist held that “[t]he deletion or addition of one letter is an insignificant change” and transferred the domain to the complainant. Similarly, in Confédération Nationale du Crédit Mutuel v. Michael Marie, et al., D2014-0005 (WIPO Feb. 25, 2014), the letter “b” was added before the complainant’s CREDIT MUTUEL trademark in the <bcreditmutuel.com> domain. The Panelist held that “the mere addition of one letter…aims at reaching Internet users that would misspell the name of a certain domain” and in that case, the addition was also egregious because it could have been confused by consumers as indicating “banque” (the French word for “bank”), which directly related to the services of the complainant.
Another highly relevant case is Amazon.com, Inc. v. Oluseyi Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003). In Amazon.com, the respondent added the letter “z” before the complainant’s AMAZON trademark in registering the <zamazon.com> domain. Amazon.com was known for selling books. The <zamazon.com> website was used “for an affiliate marketing program that provides links to web sites offering for sale products on the subject of earning a living from one’s home, including books.” The panel held that the addition of the letter “z” before the mark did nothing to reduce the risk of confusion. In fact, “[n]ot only are the names virtually visually identical, but they sound alike…the…domain name will therefore readily call to mind [the mark].”
Finally, Respondent’s Domains have all of the hallmarks of a typosquatting domain, which has been described as “a domain name that differs only by way of a minor spelling or typing error from a registered trademark to cause Internet users to arrive at webpages not in fact associated with the [c]omplainant.” ZB, N.A., A National Banking Association, dba Zions First National Bank v. Domain Admin, Whois Privacy Corp, D2016-0999 (WIPO Jul. 5, 2016) (zionsbsnk.com domain, substituting “a” in “bank” for “s,” transferred to complainant).
As demonstrated by the UDRP cases above, Respondent’s Domains are confusingly similar to Complainant’s BITFINEX Mark because the Domains feature Complainant’s invented and fanciful BITFINEX Mark and merely (a) removes the letter “t,” or (b) switches the order of the letters “n” and “e” to form the Bifinex.com Domain and Bitfienx.com Domain. Because the essence of Respondent’s Domains remains Complainant’s distinctive, invented, and fanciful Mark – BITFINEX – the Domains are confusingly similar to Complainant’s BITFINEX Mark.
In light of the above, it is clear that Complainant has prior rights in its BITFINEX Mark, and the Domains are confusingly similar to Complainant’s BITFINEX Mark in violation of UDRP, ¶4(a)(i).
ii. Respondent Has No Rights or Legitimate Interests in the Domains
[7.19] Respondent has no rights or legitimate interests in the Domains.
a. Complainant’s rights in its BITFINEX Mark pre-date Respondent’s registration of the Domains by over three (3) years for the Bifinex.com Domain and by over four (4) years for the Bitfienx.com Domain. Complainant’s earliest rights in its Marks date back at least as early as October 25, 2013. Respondent registered the Domains on August 4, 2016 and May 30, 2017. Complainant’s prior rights in its BITFINEX Mark highlight the Respondent’s lack of rights or legitimate interests in the Domains. See, e.g., Pierre Fabre Dermo-Cosmetique v. Simon Chen/personal/jinpingguo, D2011-0769 (WIPO Jul. 15, 2011) (a prima facie case that respondents lacked rights or legitimate interests in the disputed domain names was established in large part by the complainant’s earlier trademark rights).
b. Respondent is not affiliated with Complainant and has not been authorized by Complainant to use its BITFINEX brand in any manner. Respondent’s use of Complainant’s BITFINEX Mark in the context of the Domains, as well as its use of the Domains to lure unsuspecting Internet visitors to the Binance Site and Binance Downloads, also are not authorized by Complainant as the trademark owner.
c. Respondent has never used the Domains in connection with a bona fide offering of goods or services, and has never used the Domains in a legitimate, noncommercial, or fair use manner without intent for commercial gain. Upon registering the Domains, Respondent used the Domains to (a) redirect unsuspecting Internet users from Complainant’s Domain and Complainant’s Site, located at Bitfinex.com, when they inadvertently typed <bifinex.com> or <bitfienx.com> into their web browser, in order to (b) steal customers for the directly competitive Binance Site, or (c) install malware on the computers and mobile devices of Complainant’s customers, including malicious adware content, hidden within the Binance Downloads. “Use of a confusingly similar domain name to redirect Internet traffic…in order to receive a commission as part of [an] affiliate program is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.” Paragon Gifts, Inc. v. Domain.Contact, D2004-0107 (WIPO Apr. 20, 2004). Likewise, use of a confusingly similar domain name to distribute “malware, adware or other undesired applications” is also not a legitimate use under the UDRP. See, e.g., Kik Interactive Inc. v. Anonymous Domain Registration Service, D2016-1492 (WIPO Sep. 8, 2016). Accordingly, Respondent has never used the Domains in connection with a bona fide offering of goods or services, nor in a legitimate, noncommercial manner.
d. On information and belief, Respondent does not own any trademark registrations for the Domains. The Little Gym International, Inc. v. Domainstuff.com, D2003-0466 (WIPO Aug. 21, 2003).
e. On information and belief, neither zhujiangtao, nor Super Privacy Service c/o Dynadot, are commonly known by “Bifinex.com” or “Bitfienx.com.” See, e.g., Beronata Services Ltd v. Private Registration, Account Privacy / Suren Akopian, D2017-1796 (WIPO Nov. 9, 2017) (“[t]here is no evidence that the [r]espondent has been commonly known by the [d]isputed [d]omain [n]ame or the [t]rade mark…[a]s such…the [c]omplainant succeeds on the second element of the Policy”).
f. Respondent’s use of the Domains to redirect Internet traffic to the Binance Site and Binance Downloads are not legitimate uses. See, e.g., Wikimedia Foundation, Inc. v. Domain Manager, Websoft Inc., DME2017-0004 (WIPO Sep. 27, 2017) (where the subject domain was used with potential malware, the panel held that the respondent “lack[ed] rights or legitimate interests” in the domain); “LegalZoom.com, Inc. v. DomainAdmin, Whois Privacy Corp. / Maddisyn Fernandes, D2017-1894 (WIPO Nov. 14, 2017) (“use of the disputed domain name to direct Internet users to a website…which directly competes with the services for which the [c]omplainant registered and uses its trademarks [does] not constitute a bona fide offering of goods or services”); Avon Products, Inc. v. Domains Administrator c/o Dynadot Privacy, D2013-2056 (WIPO Jan. 29, 2014) (“the only ‘use’ [r]espondent has made of the disputed domain name is…to redirect web traffic through an affiliate program provider. This is not a legitimate use”).
Thus, Respondent has no rights or legitimate interests in the Domains in violation of UDRP, ¶4(a)(ii).
iii. Respondent Registered and is Using the Domains in Bad Faith
[7.20] The evidence clearly demonstrates that Respondent registered, and is using, the Domains in bad faith.
a. First, Respondent registered the Domains over three (3) and four (4) years after Complainant developed rights in its fanciful and invented BITFINEX Mark, and after Complainant first registered one of its BITFINEX Marks for its services. Respondent was therefore on constructive notice of Complainant’s rights in its Mark. See, e.g., The Fragrance Foundation Inc. v. Texas International Property Associates, D2008-0982 (WIPO Aug. 28, 2008) (“[h]ad [r]espondent conducted the most cursory of searches on the Internet or with the readily available… registration database…it would have encountered [c]omplainant’s trademarks. The [p]anel finds, therefore, that either [r]espondent is disingenuous in its representation that it was unaware of [c]omplainant, or…by failing to conduct the most minor diligence, [r]espondent made the disputed domain name registration in bad faith”).
b. Second, Respondent’s use of the Domains to redirect Internet traffic from Complainant’s Site to the directly competitive Binance Site clearly demonstrates bad faith. See, e.g., LegalZoom.com, Inc. v. DomainAdmin, Whois Privacy Corp./ Maddisyn Fernandes, D2017-1894 (WIPO Nov. 14, 2017) (the Panel held that evidence of bad faith included the fact that “at the time the [r]espondent registered the disputed domain name it must have had the [c]omplainant’s trademarks in mind as they had already been registered for many years” and the complainant’s trademark was an “invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the [c]omplainant”); Avon Products, Inc. v. Domains Administrator c/o Dynadot Privacy, D2013-2056 (WIPO Jan. 29, 2014) (the Panel held that evidence of bad faith included the fact that the respondent’s website “was intended to generate affiliate program revenue by misleading Internet users…[t]his is bad faith registration and use”). Likewise, Respondent chose a typosquatting domain that is nearly identical to Complainant’s invented BITFINEX Mark, then used the Domains to redirect Internet traffic to the Binance Site that was directly competitive to Complainant’s Site. Accordingly, Respondent registered and is using the Domains in bad faith.
c. Third, it can be inferred that Respondent knew about Complainant, its Marks, and its services when the Domains were registered, given that Respondent began using both Domains to redirect traffic to the competitive Binance Site. See, e.g., Caesars World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“[t]he fact that the [d]omain [n]ame is linked to websites that expressly refer to casino, gaming and poker services further indicates that [r]espondent knew the scope of [c]omplainant’s services and products which are commercialized under its CAESARS family of marks”). Like Caesars, it is simply untenable that Respondent was unaware of Complainant, its Marks, and its services given that the purpose of both of its Domains is to drive Internet traffic to a directly competitive cryptocurrency website.
d. Fourth, Respondent registered the Domains primarily for the purpose of disrupting Complainant’s business and with the intent of commercially benefiting from such use. See, e.g., Microsoft Corporation v. N/A, FA1103001380357 (Forum Apr. 22, 2011) (bad faith demonstrated by evidence the respondent's domain name was used to divert Internet users to the complainant's detriment); The Channel Tunnel Group Ltd. v. John Powell, D2000-0038 (WIPO Mar. 17, 2000) (awareness of complainant's mark at the time of registering confusingly similar domain name is evidence of bad faith); Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, D2000-0209 (WIPO June 5, 2000) (finding bad faith where a domain name owner sought to create “initial confusion on the part of Internet users with regard to the source of the domain name”) (internal quotations omitted); Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (“respondent’s current use of the Domain Name is aimed at creating traffic to his web site . . . . respondent is thereby taking a free ride on the goodwill of complainant’s [mark].”). Here, there can be no doubt that the Domains were carefully chosen to increase the chance that consumers would inadvertently land on the Domains and be redirected to the Binance Site or Binance Downloads. By doing so, Respondent intentionally diverted Internet traffic away from Complainant's Site towards the directly competitive Binance Site, and the malicious and likely lucrative Binance Downloads, all with the intent of commercial gain in violation of the UDRP.
e. Fifth, Respondent's bad faith registration and use can be inferred by Respondent's failure to show rights or legitimate interests in the Domains. See Complaint ¶7.17, as well as Imerys v. Unknown (gfg fdgdf, dfgdfg), D2007-0045 (WIPO Mar. 28, 2007).
f. Sixth, Respondent's bad faith registration and use can also be inferred by Respondent's constructive notice of Complainant's rights in its BITFINEX Marks, which pre-dated registration of both Domains by several years. RRI Financial, Inc. v. Chen, D2001-1242 (WIPO Dec. 11, 2001).
g. Seventh, Respondent’s bad faith registration and use is clearly demonstrated not only by its decision to use a privacy service, but particularly, Respondent’s decision to use a privacy service that refuses to identify the true respondent of the Domain even after the initiation of a UDRP proceeding. See, e.g., WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, D2012-0033 (WIPO Mar. 5, 2012) (in finding bad faith registration and use, the panel noted that “if a registrant has chosen to use a privacy service…that will not disclose the underlying registrant even once a UDRP complaint has been filed, the obvious inference is that the registrant is seeking to disguise its identity”).
h. Finally, Respondent registered and is using the Domains in bad faith because Respondent is in violation of Section 2 of the UDRP, incorporated by reference in Respondent's registration agreement with the concerned registrar.
By agreeing to be bound by Section 2, Respondent represented and warranted that its registration and use of the Domains would not infringe on another's rights. Violating these representations shows a registrant's bad faith. See, e.g., Young Genius Software AB v. MWD, D2000- 0591 (WIPO Aug. 7, 2000). Respondent's actions clearly infringe Complainant's rights. Thus, Respondent's violations of the UDRP and its registration agreement with the concerned registrar only further buttress the conclusion that Respondent has acted, and continues to act, in bad faith.
Thus, Respondent registered and is using the Domains in bad faith in violation of UDRP,
¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used 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 Complainant must prove the following three elements to obtain an order cancelling 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(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 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 (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.”).
Complainant claims rights to its BITFINEX mark through numerous applications filed around the world, some of which include China (Ser. No. TBD filed Sep. 29, 2017) and the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87/487,906 filed Jun. 13, 2017). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶4(a)(i) rights in the ASTUTE SOLUTIONS mark.); see also Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”). Complainant claims common law rights to its BITFINEX mark. It is not necessary to consider this argument in light of Complainant’s registration of its mark with the Hong Kong Intellectual Property Department on April 15, 2015, which pre-dates the registration of all of the disputed domain names (Registration No. 303,372,804). Complainant has demonstrated rights to its mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <bifinex.com>, and <bitfienx.com> domain names are confusingly similar to its BITFINEX mark, because each consists entirely of a misspelling of the mark with a “.com” top level domain. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. A minor misspelling of a mark in a domain name or incorporating a mark entirely in a domain name is not sufficient to distinguish the domain name from a mark for purposes of Policy ¶4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). Respondent’ s <bifinex.com> domain name omits the letter “t” from Complainant’s BITFINEX mark, while the <bitfienx.com> domain name transposes the “e” and “n” in BITFINEX. Respondent’s domain names are confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); 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”).
Complainant claims Respondent has no rights or legitimate interests in the <bifinex.com> and <bitfienx.com> domain names because Respondent is not commonly known by the domain names. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. 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)). The WHOIS information of record lists the registrant as “zhujiangtao” for the <bifinex.com> domain name, while the <bitfienx.com> domain name lists the registrant as “Super Privacy Service c/o Dynadot” (clearly a non de plume if there ever was one!). There is no obvious relationship to the disputed domain names. Respondent has no authorization to use Complainant’s mark for any purposes. Respondent is not commonly known by the domain names at issue.
Complainant claims Respondent is not using the <bifinex.com>, and <bitfienx.com> domain names to make a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). Respondent uses both of the domain names to redirect to the <binance.com> domain, which either competes with Complainant’s business, or distributes downloads of malware (depending upon the visitor’s choice of browser). Using a disputed domain name to redirect internet users to a website in competition with a complainant, or to install malware, demonstrates a lack of rights under Policy ¶¶4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”). That is exactly what Respondent does- use the domain names to redirect internet users to a website which, depending on the browser used, competes directly with Complainant’s business, or seeks to install malware on the visitor’s computer. Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
Respondent registered the <bitfienx.com> domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the <bitfienx.com> domain name in any way. Therefore, Respondent cannot have acquired any rights in the <bitfienx.com> domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the <bifinex.com>, and <bitfienx.com> domain names is in bad faith under Policy ¶¶4(b)(iii) and 4(b)(iv). Diverting Internet users to a competing website demonstrates bad faith under Policy ¶¶4(b)(iii) and 4(b)(iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Attempting to install malware through domain names also demonstrates bad faith under Policy ¶4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)). All of Respondent’s actions disrupt Complainant’s business for Respondent’s commercial gain. Respondent’s diversion of Internet users and distribution of malware constitutes bad faith under Policy ¶¶4(b)(iii) and/or 4(b)(iv).
Respondent registered the <bitfienx.com> domain name using a WHOIS privacy service. This raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut that presumption. This Panel is willing to find bad faith regarding the <bitfienx.com> domain name on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bifinex.com>, and <bitfienx.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, March 21, 2018
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