Bittrex, Inc. v. tim lucas
Claim Number: FA1711001757581
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is tim lucas (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitrexo.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2017; the Forum received payment on November 7, 2017.
On November 9, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bitrexo.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@bitrexo.com. Also on November 9, 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 December 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Bittrex, Inc., is an American-based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark. Complainant has rights in the BITTREX mark based upon registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003231077, registered Oct. 6, 2017). See Compl. Ex. E1-3. Complainant asserts common law rights in the BITTREX mark based on secondary meaning instilled within it through Complainant’s exclusive use. See Compl. Ex. D. ¶¶2-3. Respondent’s <bitrexo.com> is confusingly similar to the BITTREX mark as it removes the letter “t” from BITTREX and adds the letter “o” as well as the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitrexo.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to direct traffic away from Complainant’s business to a website offering competing cryptocurrency services. See Compl. Ex. F 1.
Respondent registered and uses the <bitrexo.com> domain name in bad faith. Respondent intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Complainant for Respondent’s commercial gain through the offer of competing services. Respondent offers to sell the disputed domain name in excess of the out-of-pocket costs of registration. Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. <bitrexo.com> was registered on September 7, 2017.
The
Panel finds that the disputed domain name is confusingly similar to
Complainant’s valid and subsisting trademark; that Respondent has no rights or
legitimate interests in or to the disputed domain name; and that
Respondent has engaged in bad faith use and registration of the disputed domain
name.
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 Panel finds that the disputed domain name, <bitrexo.com>, is confusingly similar to Complainant’s valid and subsisting trademark, BITTREX. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely eliminating a “t”, adding and “o” and the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to direct traffic away from Complainant’s business to a website offering competing cryptocurrency services. See Compl. Ex. F 1.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and uses the <bitrexo.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefit by offering competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant can evince bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant asserts Respondent utilizes a confusingly similar domain name to offer products that compete with those provided by Complainant. The Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Complainant further contends that Respondent offers to sell the disputed domain name in excess of the out-of-pocket costs of registration. Offers to sell a disputed domain name in excess of the out-of-pocket costs of registration evinces a finding of bad faith per Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Complainant provides evidence of an email exchange in which Respondent requested a payment of “7 BTC” which is valued at $92,240.00 USD at the time of writing this memo. See Compl. Ex. G1-3, F4-5. The Panel finds that Respondent acted in bad faith when it offered the <bitrexo.com> domain name for sale in excess of the out-of-pocket costs of registration pursuant to Policy ¶ 4(b)(i).
Last, Complainant argues Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registration of the disputed domain name. Complainant contends that Respondent’s use of the confusingly similar <bitrexo.com> domain name in connection with competitive offerings demonstrates Respondent’s actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the disputed domain name—bad faith per Policy ¶ 4(a)(iii). The Panel finds that, given the totality of the circumsances, Respondent had actual knowledge of Complainant’s rights in the BITTREX mark and subsequently acted in bad faith.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <bitrexo.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 11, 2017
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