Bittrex, Inc. v. Domain Privacy Services
Claim Number: FA1805001786849
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Domain Privacy Services (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrexe.com>, registered with Megazone Corp., dba HOSTING.KR.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2018; the Forum received payment on May 15, 2018.
On May 15, 2018, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <bittrexe.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 May 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@bittrexe.com. Also on May 23, 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 June 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Bittrex, Inc., is a U.S. based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark. Complainant has rights in the BITTREX mark due to its registration of the mark with multiple trademark agencies including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018). See Compl. Exs. E2 and E3. Respondent’s <bittrexe.com> domain name is confusingly similar as the name incorporates Complainant’s entire BITTREX mark, merely adding the letter “e” and the generic top level domain (“gTLD”) “.com” to the end of the mark.
Respondent has no rights or legitimate interests in the <bittrexe.com> domain name. Respondent is not commonly known by the BITTREX mark, nor is Respondent sponsored by or affiliated with Complainant. Complainant has not given Respondent permission to use the mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the name to redirect Internet users to a copy-cat site used to facilitate a “fast flux DNS scheme” (“FFDNS”).
Respondent registered and uses the <bittrexe.com> domain name in bad faith. Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Respondent uses the disputed domain name in connection with an FFDNS scheme for possible fraudulent or illegal aims. Further, Respondent had actual knowledge of Complainant’s mark when it registered the <bittrexe.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a U.S. based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark.
2. Complainant has established its trademarks rights in the BITTREX mark due to its registration of the mark with multiple trademark agencies including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018).
3. Respondent registered the disputed domain name on December 17, 2017.
4. Respondent uses the domain name to redirect Internet users to a copy-cat site used to facilitate a “fast flux DNS scheme” (“FFDNS”).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the BITTREX mark based upon registration of the mark with the EUIPO (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the USPTO (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018). See Compl. Exs. E2 and E3. Registration of a mark with multiple trademark organizations is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). 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.). Therefore, the Panel finds Complainant has rights in the BITTREX mark per Policy ¶4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITTREX mark. Complainant submits that the <bittrexe.com> domain name is confusingly similar to the BITTREX mark as the name contains the mark in its entirety, adding the letter “e” along with the “.com” gTLD. Misspelling of a complainant’s mark and adding a gTLD to the mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and accordingly finds that the <bittrexe.com> domain name is confusingly similar to the BITTREX mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that 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 does have 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BITTREX trademark and to use it in its domain name, adding only the letter “e”;
(b) Respondent registered the disputed domain name on December 17, 2017;
(c) Respondent uses the domain name to redirect Internet users to a copy-cat site used to facilitate a “fast flux DNS scheme” (“FFDNS”);
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <bittrexe.com> domain name, as Respondent is not commonly known by the disputed domain name or licensed to use the BITTREX mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). 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). The WHOIS information of record identifies Respondent as “Domain Privacy Services”. See Compl. Ex. A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name;
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. Instead, Respondent uses the <bittrexe.com> domain name to offer malicious software. Using a disputed domain name to operate an FFDNS scheme and distribute malicious software or phish for users’ information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant argues Respondent uses the <bittrexe.com> domain name to redirect Internet users to a rotating series of websites a copy-cat or competitor site used to install malware on users’ computers. See Compl. Ex. F3. Complainant provides a screenshot of Respondent’s website which resolves to a webpage that states “Deceptive Site Ahead warning”. See Compl. Ex. F1. Therefore, the Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bittrexe.com> in bad faith as Respondent attempts to pass itself off as Complainant for Respondent’s commercial gain. Use of a disputed domain name to pass off as a complainant for a respondent’s commercial gain evinces a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”). Complainant submits Respondent used a close approximation of Complainant’s name to register a domain name connected to cryptocurrency. See Compl. Ex. F1. Therefore, the Panel may find that Respondent registered and uses the <bittrexe.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent uses the disputed domain name in connection with an FFDNS scheme possibly to phish or scrape user information and/or distribute malicious software. Use of a disputed domain name in connection with malicious software does not represent good faith per Policy ¶ 4(a)(iii). See WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum Nov. 9, 2015) (“Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name” where “Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer.”); see also eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). As previously noted, Complainant contends Respondent uses the <bittrexe.com> domain name to redirect Internet users to a series of websites as part of an FFDNS scheme to phish for information and/or distribute malware for the purpose of illegally obtaining access to users’ accounts. See Compl. Exs. F3–F4. Complainant provides a screenshot of Respondent’s website which resolves to a webpage that states “Deceptive Site Ahead warning”. See Compl. Ex. F1. The Panel agrees with Complainant and finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <bittrexe.com> domain name with actual knowledge of Complainant’s rights in the BITTREX mark. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <bittrexe.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to gain control of the information of Complainant’s users. See Compl. Ex. F1. Therefore, the Panel finds that Respondent registered the <bittrexe.com> domain name with actual knowledge of Complainant’s BITTREX mark—bad faith per Policy ¶4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BITTREX mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bittrexe.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 15, 2018
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