iFinex Inc. v. Yuri Hefetz / Genie-Solution
Claim Number: FA1805001789385
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn LLP, Washington, USA. Respondent is Yuri Hefetz / Genie-Solution (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitfinexlive.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On May 31, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitfinexlive.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 June 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@bitfinexlive.com. Also on June 1, 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 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, iFinex Inc., operates the world’s largest bitcoin trading platform and uses the BITFINEX mark to provide and market its services. Complainant has rights in the mark based upon filing with the United States Patent and Trademark Office (“USPTO”) (Serial No. 87/487,906 filed on June 13, 2017.) Complainant also holds multiple registrations for the BITFINEX mark in other countries.
2. Respondent’s <bitfinexlive.com>[i] is confusingly similar to the mark as Respondent merely adds the descriptive term “live” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
3. Respondent does not have rights or legitimate interests in the <bitfinexlive.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted Respondent permission or license to use the BITFINEX mark for any purpose.
4. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the domain name to pass off as Complainant in order to phish for users’ personal information.
5. Respondent registered and is using the <bitfinexlive.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract users to the resolving website which mimics Complainant’s mark in order to commercially gain from users’ confusion.
6. Additionally, Respondent is using the domain name as part of a phishing scheme. Further, Respondent used a privacy service to conceal its identity.
7. Finally, Respondent had actual and/or constructive knowledge of Complainant’s BITFINEX mark and business prior to registration of the domain name and during subsequent use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITFINEX mark. Respondent’s domain name is confusingly similar to Complainant’s BITFINEX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bitfinexlive.com> domain name and that Respondent registered and uses the domain name 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 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.”).
Complainant has multiple registrations in the BITFINEX mark in six countries. A complainant has rights in a mark when it has registered a mark in multiple countries per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provides a list and copies of its BITFINEX mark registered with other countries including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 1,6754,707, registered on Dec. 20, 2017.)
Complainant next claims that Respondent’s <bitfinexlive.com> domain name is confusingly similar to the BITFINEX mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel agrees with Complainant and holds that the <bitfinexlive.com> domain name does not contain changes that would sufficiently distinguish it from the BITFINEX mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bitfinexlive.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <bitfinexlive.com> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BITFINEX mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under 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, the lack of evidence in the record to indicate a respondent is authorized to use a complainant’s mark may also support a finding that a respondent does not have rights or legitimate interests in the complainant’s 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 “Yuri Hefetz / Genie-Solution.” Therefore, the Panel finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the <bitfinexlive.com> domain name.
Complainant further argues Respondent fails to use the <bitfinexlive.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant has provided evidence that Respondent uses the domain name to pass off as Complainant to conduct a phishing scheme. Passing off as a complainant to conduct a phishing scheme is further evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant has shown that Respondent’s resolving website mimics Complainant’s services thereby misleading Internet visitors, many of whom may be Complainant’s existing customers, to falsely believe they are setting up a new account with Complainant. Therefore, the Panel agrees Respondent has not used <bitfinexlive.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <bitfinexlive.com> domain name in bad faith by intentionally attempting to disrupt Complainant’s business and attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s BITFINEX mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (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)). Complainant has persuasively shown that Respondent is using the fame of the Complainant’s trademarks to improperly increase traffic to the domain name’s resolving website in order to gather personal information from Complainant’s customers for Respondent’s own commercial gain. Complainant provides a screenshot of the domain name’s resolving website which mimics Complainant’s website which supports Complainant’s contention. Therefore, the Panel holds that Respondent registered and uses the <bitfinexlive.com> domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s BITFINEX mark. Actual knowledge is sufficient and may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant argues that due to the fame and worldwide use of the BITFINEX mark, and the fact that Respondent attempts to mimic Complainant’s website using the BITFINEX mark, Respondent must have had actual knowledge. The Panel agrees.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitfinexlive.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 9, 2018
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