Bittrex, Inc. v. Ami Chain
Claim Number: FA1709001751667
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Ami Chain (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrexmine.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 September 29, 2017; the Forum received payment on September 29, 2017.
On October 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bittrexmine.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 October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@bittrexmine.com. Also on October 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2017, 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 owns and operates an international cryptocurrency exchange service using the BITTREX mark. Complainant filed to register the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87,333,760, filed Feb. 13, 2017). Complainant has established common law rights in the BITTREX mark through continuous use of the mark in commerce since 2014, extensive media promotion and marketing, and consumer recognition of the mark.
2. Respondent’s <bittrexmine.com>[1] is confusingly similar to the BITTREX mark because it wholly incorporates the mark, adding the generic term “mine,” and “.com” generic top level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <bittrexmine.com> domain name. Respondent is not commonly known by the domain name. Respondent does not have a license or authority to use the BITTREX mark.
4. Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain. Instead, Respondent is using <bittrexmine.com> to pass itself off as Complainant to obtain users’ personal information through a phishing scheme.
5. Respondent has registered and used <bittrexmine.com> in bad faith. Respondent attempts to pass off by mimicking Complainant’s <bittrex.com> to obtain users’ personal information. Respondent registered <bittrexmine.com> with actual knowledge of Complainant and its rights to the BITTREX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law 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 <bittrexmine.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.”).
Although Complainant has pending USPTO registrations for the BITTREX mark, generally, such pending registrations are insufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). However, a complainant does not need to have a registered trademark if it can establish common law rights to the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (“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.”). The record supports Complainant’s assertion that it has common law rights in the BITTREX mark through use of the mark in commerce, media coverage, consumer recognition, and advertising and marketing expenditures.
Complainant contends that Respondent’s <bittrexmine.com> is confusingly similar to the BITTREX mark because it incorporates the mark in its entirety, adding the generic term “mine” and “.com” gTLD. The inclusion of an entire mark, along with the addition of a generic term, and gTLD, are insufficient to differentiate a domain name from a mark om which a complainant has rights. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s domain name from the complainant’s mark under Policy ¶ 4(a)(i)). As such, the Panel concludes that Respondent’s <bittrexmine.com> domain name is confusingly similar to Complainant’s BITTREX mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bittrexmine.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 asserts that Respondent lacks rights or legitimate interests in <bittrexmine.com> Complainant argues that Respondent is not commonly known by the domain name. In cases where the respondent does not submit a response, WHOIS information may be used to determine whether a respondent is commonly known by a domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, WHOIS information associated with <bittrexmine.com> identifies Respondent as “Ami Chain.” Absent evidence to the contrary, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use of <bittrexmine.com>. Complainant has produced evidence that Respondent’s site mirrors Complainant’s <bittrex.com> domain name, and offers services that compete with the services offered by Complainant. Moreover, Complainant has shown that Respondent uses the <bittrexmine.com> domain name to phish for users’ personal information. Such use does not constitute a bona fide use of the name. 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.”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <bittrexmine.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <bittrexmine.com> domain name in bad faith. Complainant has shown that Respondent attempts to pass itself off as Complainant and mimic Complainant’s legitimate website to phish for users’ personal information. Passing off in order to obtain personal information through a phishing scheme constitutes bad faith under the Policy. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to [fraudulently] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Thus, the Panel concludes that Respondent’s fraudulent use of a website identical to Complainant’s website shows bad faith registration and use.
Finally, Complainant argues that Respondent registered <bittrexmine.com> with actual knowledge of Complainant and its rights to the BITTREX mark. Because Respondent’s domain name incorporates exactly Complainant’s mark, it is apparent that Respondent had actual knowledge of Complainant’s mark when Respondent registered the <bittrexmine.com> domain name. Thus, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
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 <bittrexmine.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2017
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