Bittrex, Inc. v. Operi Manaha
Claim Number: FA1811001815225
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Operi Manaha (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <appbittrex.com>, registered with NameCheap, Inc..
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 November 6, 2018; the Forum received payment on November 6, 2018.
On November 7, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <appbittrex.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@appbittrex.com. Also on November 8, 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 November 30, 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, Bittrex, Inc., is a U.S. based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark. Complainant registered the BITTREX mark with multiple registries 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). Respondent’s <appbittrex.com>[i] domain name is confusingly similar to Complainant’s BITTREX mark because it wholly incorporates Complainant’s mark and only adds the generic and/or descriptive term “app” and the “.com” generic top-level domain (“gTLD”) to the mark.
2. Respondent does not have rights or legitimate interests in the <appbittrex.com> domain name. Respondent is not licensed or authorized to use Complainant’s BITTREX mark and is not commonly known by the domain name.
3. Additionally, Respondent is not using the <appbittrex.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users to a competing website. In addition, Respondent uses the domain name in furtherance of a fraudulent, phishing scheme.
4. Respondent registered and uses the <appbittrex.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
5. Additionally, Respondent uses the domain name to host a phishing scheme.
6. Finally, Respondent had actual and/or constructive knowledge of the BITTREX mark when it registered and subsequently used the <appbittrex.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITTREX mark. Respondent’s domain name is confusingly similar to Complainant’s BITTREX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <appbittrex.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 rights in the BITTREX based upon its registrations with the USTPO and the EUIPO. Registration of a mark with multiple trademark agencies is sufficient to establish rights in the mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014). Here, Complainant has provided copies of its registrations of the BITTREX mark with the USTPO (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018), and the EUIPO (e.g. Reg. No. 016727109, registered Oct. 13, 2017).
Next, Complainant alleges the <appbittrex.com> domain name is confusingly similar to Complainant’s BITTREX mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark do not sufficiently mitigate 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.); 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 and finds that the <appbittrex.com> domain name does not contain changes that would sufficiently distinguish it from the BITTREX 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 <appbittrex.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 the <appbittrex.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the BITTREX mark and is not commonly known by the domain name. 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, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the domain name. 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 “Operi Manaha,” and there is no other evidence to suggest Respondent is authorized to use the BITTREX mark. The Panel finds that Respondent is not commonly known by the <appbittrex.com> domain name per Policy ¶ 4(c)(ii).
Complainant alleges Respondent does not use the <appbittrex.com> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Specifically, Complainant contends Respondent attempts to pass off as being affiliated with Complainant’s business in order to direct traffic away from Complainant to a competing website. Using the <appbittrex.com> domain name to pass off and divert users to a competing website 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 Bittrex, Inc. v.R Chitra, FA 1764579 (Forum Feb. 1, 2018) (finding use of BITREXCON.COM domain to compete with Complainant and divert internet users away from Complainant’s business to a website that appears to offer competing cryptocurrency services is neither a bona fide nor noncommercial or fair use under the Policy). Here, Complainant provides screenshots of the domain name’s resolving website which features cryptocurrency advice and security services that has fully incorporated Complainant’s BITTREX mark into the logo. Complainant has provided sufficient evidence to show that Respondent uses the <appbittrex.com> domain name to divert users to Respondent’s website and create the false impression of affiliation with Complainant’s website. 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).
In addition, Respondent uses the <appbittrex.com> domain name to perpetrate a phishing scheme. This use 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 Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant has provided evidence that Respondent uses the <appbittrex.com> domain name as part of a fraudulent phishing scheme because the Iris platform identified the domain name as being in use with phishing. Iris is a service offered by DomainTools LLC, which is a threat intelligence and investigation platform that combines enterprise grade domain and DNS-based intelligence to help security teams investigate potential cybercrime and cyberespionage; Iris assessed the risk score that the <appbittrex.com> is used in connection with phishing at 90/100. Therefore, the Panel holds 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <appbittrex.com> in bad faith as Respondent attempts to divert users from Complainant’s website to Respondent’s where Respondent offers competing products and services for commercial gain. Use of a domain name incorporating the mark of another to offer competing products and services for commercial gain may show bad faith pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. R Chitra, 1764579 (Forum Feb. 1, 2018) (finding use of confusingly similar BITREXCON.COM domain to divert internet users away from Complainant’s business to a website that appears to offer competing cryptocurrency services constitutes bad faith under the Policy); see also 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.”). The Panel agrees with Complainant’s assertion that Respondent uses the <appbittrex.com> domain name to direct Internet users to a website to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Respondent also attempts to offer competing cryptocurrency products and services for commercial gain. Therefore, the Panel holds that Respondent registered and uses the <appbittrex.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the <appbittrex.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 may show 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 purposely 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 <appbittrex.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to host a website which features Complainant’s mark. The Panel agrees that Respondent registered the <appbittrex.com> domain name with actual knowledge of Complainant’s BITTREX mark, thus demonstrating bad faith per Policy ¶4(a)(iii).
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 <appbittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 10, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page