iFinex Inc. v. Elba Perez / GDI Interest
Claim Number: FA1803001779837
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn LLP, Washington, USA. Respondent is Elba Perez / GDI Interest (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitfinex.cash>, registered with Domain.com, 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 March 30, 2018; the Forum received payment on March 30, 2018.
On March 30, 2018, Domain.com, LLC confirmed by e-mail to the Forum that the <bitfinex.cash> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 April 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@bitfinex.cash. Also on April 6, 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 April 30, 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.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Complainant has trademark filings (collectively, the “Filing(s)”) for its BITFINEX, BITFINEX & Leaf Design Logo, and Leaf Design 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 & Leaf Design Logo and Leaf Design Marks at least as early as 2016. In addition, Complainant first registered its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark on April 15, 2015. Registrant currently owns ten (10) registrations for its Marks in Hong Kong, the European Union, and India, issued in 2015, 2017, and 2018.
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 Domain is 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 Domain is 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 Domain; and UDRP, ¶4(a)(iii) The Domain was registered and is 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 2015 Hong Kong trademark registration for its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark, and 2017 European Union and Hong Kong trademark registrations for its BITFINEX, BITFINEX & Leaf Design, and Leaf Design Marks.
[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 and a half (4.5) 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.” By November 2017, Complainant was the largest BTC-USD trading exchange in the world, capturing up to 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 Domain on February 14, 2018 (“Domain Registration Date”).
[7.11] On information and belief, the Domain has only been used as an infringing phishing site to steal information from Complainant’s customers (“Phishing Site”). Specifically, the Phishing Site does the following:
· It uses Complainant’s BITFINEX trademark and BITFINEX & Leaf Design logo prominently in the upper left-hand corner of the home screen.
· It claims to offer a “2x ETH Bitfinex Deposit Bonus” (“Fake Bonus”). “ETH” references Ethereum, a popular brand of cryptocurrency that is available through the platform hosted on Complainant’s Site.
· To obtain the Fake Bonus, Respondent’s Phishing Site requires that the Internet visitor “Type your Bitfinex username and click on the button below to generate the Smart Contract Address.”
· Once the Internet visitor types their username and selects the “Generate Smart Contract” button, they are given a Smart Contract identification number and asked to “Send your desired amount of ETH to the Smart Contract in order to receive the bonus on the Bitfinex username. (Minimum is .2 ETH).” As of March 28, 2018 when this was created, .2 ETH was worth $90.16 US Dollars.
· On information and belief, this is a ruse to steal ETH from unsuspecting customers of Complainant.
· Besides the prominent Fake Bonus advertisement and Generate Smart Contract portion of the Phishing Site, the remainder of the home page located at the Domain is a near identical replica of Complainant’s Site. A side-by-side comparison of Complainant’s Site and the Phishing Site is provided. In fact, the copyright notice at the bottom of the site reads “Copyright © 2013-2018 iFinex Inc. All rights reserved.” Rather than fully copy Complainant’s Site and host it on the Phishing Site, Respondent found a shortcut: when Internet visitors to Respondent’s Phishing Site click on any link besides the “Generate Smart Contract” button, they are redirected to Complainant’s Site.
· This direct communication between the Phishing Site and Complainant’s Site blurs the line between the Phishing Site and Complainant’s Site, making the Phishing Site appear affiliated with Complainant – and therefore even more legitimate to unsuspecting Internet users.
[7.12] The Phishing Site lures unsuspecting visitors into providing their login information for Complainant’s Site under the guise that visitors can obtain additional virtual currency by sending Ethereum cryptocurrency through the site: this is directly competitive to Complainant’s Site and Complainant’s business: both provide virtual currency services, and both offer the same type of virtual currency (Ethereum), as advertised in the Fake Bonus advertisement on Respondent’s Phishing Site.
C. Legal Grounds Proving Domain Violates the UDRP
[7.13] The Domain should be transferred to Complainant pursuant to the UDRP because (1) Complainant has rights in its Mark, and the Domain is confusingly similar to Complainant’s Mark, (2) Respondent has no rights or legitimate interests in the Domain, and (3) Respondent registered and is using the Domain in bad faith.
i. The Domain is Confusingly Similar to Complainant’s Mark
[7.14] As demonstrated above, Complainant owns enforceable rights in the invented, fanciful, well known BITFINEX Mark.
[7.15] Complainant’s rights in its Mark pre-date the registration date of the Domain. Complainant’s rights in its Marks date back at least as early as 2013. Respondent registered the Domain on February 14, 2018 and subsequently used the Domain to host a Phishing Site that uses Complainant’s trademark and copyright-protected BITFINEX & Leaf Design logo, mimics Complainant’s Site, asks for username details for Complainant’s Site, tries to steal Ethereum cryptocurrency worth a minimum of $90.16 per transaction from Complainant’s customers, and links directly to Complainant’s Site.
[7.16] The Domain is legally identical to Complainant's BITFINEX Mark. See, e.g., Blistex Inc. v. Online Multimedia Communications, Inc., D2000-0552 (WIPO Aug. 27, 2000) (finding the stridex.com domain to be “legally identical to the complainant’s STRI-DEX brand). 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 bitfienex.com Domain differs from Complainant’s Mark solely by one letter (an additional “e” is added before the letter “n”). This minor difference is insufficient to avoid confusion between Complainant’s Mark and the Domain.
Here, there is no question that Respondent’s Domain is confusingly similar to Complainant’s BITFINEX Mark because the Domain features Complainant’s invented, fanciful BITFINEX brand with no alterations, and merely adds the .cash top-level domain to the end to form the Bitfinex.cash Domain. Therefore, Complainant’s BITFINEX mark is legally identical to Respondent’s Bitfinex.cash Domain. In addition, Respondent’s Domain is highly similar to Complainant’s Domain (Bitfinex.com), varying by solely the last three letters (“ash” instead of “com”).
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 Domain 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 Domain is solely used as a Phishing Site that mimics Complainant’s Site, uses Complainant’s logo, includes a copyright notice purporting to be Complainant, requests Complainant’s customer’s user names, requests that funds be transferred from Complainant’s customer’s accounts, and directly links users to Complainant’s Site. Respondent’s motivation for the Phishing Site located at the Domain appears to be financial gains garnered through the Fake Bonus offer.
As demonstrated by the UDRP cases above, Respondent’s Domain is legally identical and/or confusingly similar to Complainant’s BITFINEX Mark because the Domain features Complainant’s invented and fanciful BITFINEX Mark and merely adds the .cash top-level domain after Complainant’s BITFINEX Mark to form the <Bitfinex.cash> Domain. Because the essence of Respondent’s Domain remains Complainant’s distinctive, invented, and fanciful Mark – BITFINEX – the Domain is 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 Domain is confusingly similar to Complainant’s BITFINEX Mark in violation of UDRP,
¶4(a)(i).
ii. Respondent Has No Rights or Legitimate Interests in the Domain
[7.17] Respondent has no rights or legitimate interests in the Domain.
a. Complainant’s rights in its BITFINEX Mark pre-date Respondent’s registration of the Domain by nearly four (4) years. Complainant’s earliest rights in its Marks date back at least as early as October 25, 2013. Respondent registered the Domain on February 14, 2018. Complainant’s prior rights in its BITFINEX Mark highlight the Respondent’s lack of rights or legitimate interests in the Domain. 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 Domain, its use of Complainant’s BITFINEX & Design logo, its use of Complainant’s iFinex Inc. trade name in the copyright notice on the Phishing Site, as well as its use of the Domain to lure unsuspecting Internet visitors to the Phishing Site to steal their username information and Ethereum cryptocurrency, also are not authorized by Complainant as the trademark owner.
c. Respondent has never used the Domain in connection with a bona fide offering of goods or services, and has never used the Domain in a legitimate, noncommercial, or fair use manner without intent for commercial gain. Upon registering the Domain, Respondent immediately used it to (a) host a Phishing Site that mimics Complainant’s Site, (b) collect username details from Complainant’s customers, (c) advertise the Fake Bonus purporting to be affiliated with Complainant and Complainant’s Site, and (d) steal Complainant’s customer’s Ethereum cryptocurrency. “[T]he use of a domain name for the illegal activity of phishing can never confer rights or legitimate interests on a respondent.” Educational Testing Service v. Ali Mohammed Ahmed, Afakcenter, D2017-1600 (WIPO Oct. 5, 2017). Accordingly, Respondent has never used the Domain 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 Domain. See, e.g., The Little Gym International, Inc. v. Domainstuff.com, D2003-0466 (WIPO Aug. 21, 2003).
e. On information and belief, the Respondent is not commonly known by “Bitfinex” or “Bitfinex.cash.” 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 Domain to host a Phishing Site, and even redirect Internet traffic to Complainant’s Site, are not legitimate uses. See, e.g., Educational Testing Service v. Ali Mohammed Ahmed, Afakcenter, D2017-1600 (WIPO Oct. 5, 2017) (holding that the respondent’s “bad faith registration and use is…demonstrated by the fact that the [r]espondent used the [ibt-registration- test.org domain] for what appears to be a phishing website, an illegitimate activity, which is manifestly considered evidence of bad faith”).
Thus, Respondent has no rights or legitimate interests in the Domain in violation of UDRP, ¶4(a)(ii).
iii. Respondent Registered and is Using the Domain in Bad Faith
[7.18] The evidence clearly demonstrates that Respondent registered, and is using, the Domain in bad faith.
a. First, Respondent registered the Domain nearly four (4) years after Complainant developed rights in its fanciful and invented BITFINEX Mark, and over two (2) years 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 Domain to host a Phishing Site that closely resembles Complainant’s Site, requests user name information and currency transactions from Complainant’s Site, and even redirects Internet traffic from certain links to Complainant’s Site, clearly demonstrates bad faith. See, e.g., ZB, N.A., a national banking association, dba Zions First National Bank v. Private Registration, PRIVATE, D2017-0714 (in holding that the zinsbank.com domain should be transferred to the complainant, the panel noted that the respondent’s evidence of bad faith included use of the domain to resolve “to a website that contains links to [c]omplainant”); 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”). Respondent chose a domain that is legally identical to Complainant’s invented BITFINEX Mark, then used the Domain to copy Complainant’s Site, steal from Complainant’s customers, and link to Complainant’s Site. Accordingly, Respondent registered and is using the Domain in bad faith.
c. Third, it can be inferred that Respondent knew about Complainant, its Marks, and its services when the Domain was registered, given that Respondent quickly began using the Domain to copy Complainant’s Site on the Phishing Site, link to Complainant’s Site, use Complainant’s BITFINEX & Leaf Design logo, and even use Complainant’s iFinex Inc. trade name in the copyright notice for the Phishing Site. See, e.g., Caesars World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“The 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 its Domain’s entire purpose is to pretend to be affiliated with Complainant and Complainant’s Site for the purpose of stealing from Complainant’s customers.
d. Fourth, Respondent registered the Domain 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 Domain was carefully chosen to increase the chance that consumers would inadvertently land on the Domain and be lured by the Fake Bonus offer that is prominently displayed on the landing page. By doing so, Respondent intentionally diverted Internet traffic away from Complainant's Site, and intentionally diverted Ethereum cryptocurrency funds to Respondent and away from Complainant, 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 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, some of which were in use for nearly four (4) years and seven (7) of which achieved trademark registration before the Domain (incorporating Complainant's invented BITFINEX Mark in its entirety) was registered. See RRI Financial, Inc. v. Chen, D2001- 1242 (WIPO Dec. 11, 2001).
g. Finally, Respondent registered and is using the Domain 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, Domain.com, LLC. By agreeing to be bound by Section 2, Respondent represented and warranted that its registration and use of the Domain 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 Domain in bad faith in violation of UDRP, ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 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 has rights in the BITFINEX mark through its registration of its mark with the EUIPO (e.g. Reg. No. 16,754,707, registered Dec. 20, 2017), inter alia. Registration with a governmental trademark agency, such as the EUIPO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (“Registration with the OHIM is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i).”). Complainant has established rights in the BITFINEX mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <bitfinex.cash> domain name is identical to Complainant’s mark because it is identical to the BITFINEX mark and merely adds the gTLD “.cash.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶4(a)(i).”). The <bitfinex.cash> domain name is identical to the BITFINEX mark under Policy ¶4(a)(i).
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 <bitfinex.cash> domain name. 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 Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Elba Perez / GDI Interest” as the registrant. There is no evidence showing Respondent was known by the BITFINEX mark. There is no obvious relationship between Respondent’s name and Complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant and Complainant has not given Respondent permission to use Complainant’s mark in any manner. The Panel must conclude Respondent is not commonly known by the <bitfinex.cash> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the domain name to mimic Complainant’s site to phish for user information. Passing off as a complainant to phish for a complainant’s user information is evidence of Respondent makes no bona fide offering of goods or services or has a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). The resolving webpage displays the message “2x ETH Bitfinex Deposit Bonus” and appears to allow users to enter their login information for Complainant’s site on Respondent’s website to get a financial reward. Respondent attempts to pass itself off as Complainant to phish for information and fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use per Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <bitfinex.cash> domain name in bad faith by hosting a phishing site that mimics Complainant’s own site by requesting Complainant’s customers’ login information. While a financial reward is promised, funds are actually removed from unsuspecting user’s accounts. Respondent’s website even redirects Internet traffic from certain links displayed on the website to Complainant’s real site. Such use disrupts Complainant’s business and creates confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name to disrupt a complainant’s business and trades upon the goodwill of a complainant for commercial gain constitutes bad faith under Policy ¶¶4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶4(b)(iv) 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.”). Respondent’s resolving webpage displays the message “2x ETH Bitfinex Deposit Bonus” and allows gullible users to enter their login information on Respondent’s website. Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶4(b)(iii) & (iv).
Complainant claims Respondent had actual knowledge of Complainant’s BITFINEX mark when Respondent registered the <bitfinex.cash> domain name. It appears Respondent actually knew about Complainant’s website because (i) Respondent mimicked Complainant’s website (the Panel does not believe that is a coincidence) (ii) Parts of Respondent’s website liked with and passed information to Complainant’s website (once again, not a coincidence) and (iii) Respondent’s website mimicked the login experience of Complainant’s website (still not a coincidence). This would not have been possible unless Respondent knew of Complainant’s brand and knew how Complainant’s website operated with a fair bit of detail. This demonstrates Respondent actually knew Complainant's rights in the mark (and website) prior to registering the disputed domain name. This constitutes bad faith registration and use under Policy ¶4(a)(iii). See 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). Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶4(a)(iii).
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 <bitfinex.cash> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 8, 2018
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