iFinex Inc. v. Bitfinex India
Claim Number: FA1709001750447
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Garvey Schubert Barer, Washington, USA. Respondent is Bitfinex India (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitfinexnetwork.com> and <bitfinexglobal.com>, registered with 101domain GRS Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Vali Sakellarides as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2017; the Forum received payment on September 23, 2017.
On September 26, 2017, 101domain GRS Limited confirmed by e-mail to the Forum that the <bitfinexnetwork.com> and <bitfinexglobal.com> domain names are registered with 101domain GRS Limited and that Respondent is the current registrant of the names. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS Limited 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 September 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2017 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@bitfinexnetwork.com and postmaster@bitfinexglobal.com. Also on September 27, 2017, 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.
A timely Response was received and determined to be complete on October 13, 2017.
On October 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Vali Sakellarides 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has used BITFINEX mark 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 and Leaf Design Marks 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.
Complainant submitted copies of trademark registrations for its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark in Hong Kong, which was registered on April 15, 2015 under Registration No. 303,372,804 and copies of trademark registrations for BITFINEX, BITFINEX Logo, and Leaf Design Marks which have been filed in Asia (including Hong Kong 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.
Complainant asserts that through extensive use of its above-mentioned trademark registrations and substantial investments in promoting the BITFINEX mark over the course of approximately four (4) years, its mark has developed substantial goodwill and a positive reputation. Complainant’s services are available in dozens of jurisdictions around the globe.
Complainant submitted a signed Declaration of JL VAN DER VELDE, Chief Executive Officer of Complainant, declaring that in less than four (4) years Complainant became “the world’s largest and most advanced bitcoin trading platform.” As of August 2017, Complainant’s BITFINEX branding trading exchange 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. He also referred to the history of Complainant’s bitfinex.com domain which was registered by Complainant’s predecessor in interest on October 11, 2012. The relevant WHOIS Record for Complainant’s Domain has been submitted.
Complainant submits examples of Complainant’s use of BITFINEX, including current screenshots from Complainant’s bitfinex.com website.
Complainant submits that its BITFINEX mark is invented, fanciful, and well-known and that BITFINEX is not descriptive in any manner. This term solely serves as a source indicator for Complainant’s services. It also submits that Respondent “Bitfinex India” is not an entity or individual affiliated with Complainant in any manner and that the BitfinexNetwork.com and BitfinexGlobal.com domains are not affiliated with Complainant in any manner. Respondent has not been authorized by Complainant to use its trademark registrations or copyrights in any manner. Respondent’s use of BITFINEX in the context of the disputed domain names is not authorized by Complainant. In addition, Respondent’s use of BITFINEX and copyrights in the context of a copycat website created by Respondent and associated with the BitfinexNetwork.com Domain (“Website”) is not authorized by Complainant.
B. Respondent
Respondent alleges that only bitfinexnetwork.com is involved in this case. It also alleges that Bitfinex is not registered in India and therefore it doesn’t derive a brand value in India. Respondent declares that it only intends to do business in India and alleges that it has every right to use the disputed domain name in respect of its business because its offerings are very different from Complainant’s offerings. It also declares that it is a company registered with the same name and not competing with Complainant’s website www.bitfinex.com, that its business has been commonly known in India as bitfinexnetwork, which is very distinct from bitfinex.com, which is a portal for exchange of cryptocurrencies, whereas Respondent is a direct selling company and has much more to offer than only from its portal, which is for commercial use but also for the non-commercial use as in the education of crypto-currencies in India, with no any intent of diverting or to tarnish bitfinex.com. Respondent alleges that it is not a competitor of Complainant’s website and it does not disrupt Complainant’s business and that the disputed domain name(s) (was/were) not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion. Finally, Respondent concedes to change the layout, designs and other things of the website reassuring that it wishes not to violate Complainant’s business
Complainant, in less than four (4) years, became the world’s largest and most advanced bitcoin trading platform in the world. Presently, Complainant’s marks are used around the globe, including in Asia, North America, and in Europe, in connection with financial services in Class 36. Complainant holds common law rights in the BITFINEX mark as Complainant has used the mark extensively since approximately four (4) years in connection with financial services. See Compl. Annex 4. Complainant has developed substantial goodwill in the mark, has invested significant time and effort in promoting the mark, and has become the world’s largest and most advanced bitcoin trading platform in the world. See Compl. Annexes 6 & 8. Respondent’s <bitfinexnetwork.com> and <bitfinexglobal.com> domain names are confusingly similar to Complainant’s mark as they contain the inventive and fanciful BITFINEX mark and append either the generic term “network” or “global” along with the generic top-level domain (“gTLD”) “.com.”
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.
The Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i). Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that Complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims it has developed substantial goodwill in the mark, has invested significant time and effort in promoting the mark, and has become the world’s largest and most advanced bitcoin trading platform in the world. See Compl. Annexes 6 & 8.
The Panel finds that the disputed domain names <bitfinexnetwork.com> and <bitfinexglobal.com> are confusingly similar to the BITFINEX mark under Policy ¶4(a)(i). Both disputed domain names contain the inventive and fanciful BITFINEX mark and append either the generic term “network” or “global” along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of 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 finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and the burden of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that 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 Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). The WHOIS identifies “Bitfinex India / Bitfinex India” as the registrant. See Compl. Annex 10. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use the mark in any domain name. Accordingly, the Panel finds that Respondent has not been authorized to use the BITFINEX mark in the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant contends that the disputed domain names resolves to websites that lack content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots for both of the disputed domain names. The <bitfinexnetwork.com> domain name appears to contain Complainant’s leaf design and the message “BITFINEX NETWORK.” See Compl. Annex 13. The <bitfinexglobal.com> domain name displays various content, including the message “Future home of… bitfinexglobal.com,” however none of the content would lead a user to believe there is anything of substance on the site. See Compl. Annex 11.
Complainant next argues that Respondent attempts to pass off as Complainant on the resolving webpage for the <bitfinexnetwork.com> domain name. Passing off can evince a lack of a bona fide offering of goods or services or 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 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).”). As noted in the previous paragraph, the webpage for the <bitfinexnetwork.com> domain name contains Complainant’s leaf mark. See Compl. Annex 13. The Panel finds that Respondent uses Complainant’s mark and design and thus fails to provide 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).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business and creating a likelihood for 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 that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant contends that the disruption and confusion stems from Respondent’s use of Complainant’s mark in the domain names, and from the use of Complainant’s design on the resolving webpage. See Compl. Annex 13. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any substantive purpose. Inactively holding a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted previously, both of the disputed domain names do not contain any substantive material for users to view. See Compl. Annex 11 & 13. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith by not making an active use of the resolving webpages.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s BITFINEX mark. The Panel disregards the arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel finds, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and this actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant rights in the mark as Complainant established right four (4) years prior to Respondent’s registration of the domain names, and Respondent uses Complainant fanciful mark and design on the resolving webpage for the <bitfinexnetwork.com> domain name. See Compl. Annex 13. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <bitfinexnetwork.com> and <bitfinexglobal.com> domain names be TRANSFERRED from Respondent to Complainant.
Vali Sakellarides, Panelist
Dated: October 30, 2017
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