DECISION

Bittrex, Inc. v. jonas silva bezerra

Claim Number: FA1711001758585

PARTIES

Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is jonas silva bezerra (“Respondent”), Morocco.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com>, registered with Namecheap Inc; PDR Ltd. d/b/a PublicDomainRegistry.com.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 21, 2017.

On November 15, 2017, November 20, 2017 and November 21, 2017, Namecheap Inc; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> domain names are registered with Namecheap Inc; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Namecheap Inc; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Namecheap Inc; 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@bittrexy.com, postmaster@bittrexv.com, postmaster@bittrexw.com, postmaster@bittrex3.com. Also on November 21, 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 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

Complainant

1. Complainant, Bittrex, Inc., began using its BITTREX mark in U.S. commerce in connection with its cryptocurrency exchange in February of 2014. In addition to its common law rights, Complainant owns trademarks for its BITTREX mark through the United Kingdom Intellectual Property Office (“UKIPO”) and the European Union Intellectual Property Office ("EUIPO"). (e.g., Reg. No. UK00003231077, registered Oct. 6, 2017; e.g., Reg. No. 016727109, registered Oct. 13, 2017). See Compl. Ex. E1-E2. Respondent’s <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> are confusingly similar to Complainant’s BITTREX mark because each appends one letter or numeral and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.

2. Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain names. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <bittrexy.com> and <bittrexv.com> are used as part of a fraudulent scheme to obtain customer information by replicating Complainant’s Bittrex Website log-in page and impersonating Complainant. See Compl. Ex. F1, F2. The <bittrex3.com> domain resolves to a page stating that the domain has been taken down because the domain holder has not been verified. See Compl. Ex. F3. The <bittrexw.com> domain is resolving to a page stating the website is not functioning. See Compl. Ex. F4.

3. Respondent registered and is using the disputed domain names in bad faith. Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the domain names and content therein. Respondent’s use of the domain names indicates that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark.

Respondent

1. Respondent did not submit a Response.

FINDINGS

1. Respondent’s <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> domain names are confusingly similar to Complainant’s BITTREX mark.

2. Respondent does not have any rights or legitimate interests in the <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> domain names.

3. Respondent registered or used the <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> domain names in bad faith.

DISCUSSION

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.”).

Identical and/or Confusingly Similar

Complainant asserts that it has common law rights in its BITTREX mark. Common law rights are sufficient to establish rights in a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”); see also 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.”). Common law rights may be established through evidence of secondary meaning, including longstanding use, evidence of holding an identical domain name, media recognition, and promotional advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant contends that it has established secondary meaning in the mark through its continuous use since 2014, its registration of the <bittrex.com> domain name, and extensive marketing and advertising expenditures to promote the mark. See Compl. Ex. 3,4 (Media coverage about Complainant’s Bittrex business, WHOIS Record for <bittrex.com>). Therefore, the Panel concludes that Complainant has common law rights in the BITTREX mark.

Next, Complainant contends it registered its BITTREX mark through the UKIPO and the EUIPO. (e.g., Reg. No. UK00003231077, registered Oct. 6, 2017; e.g., Reg. No. 016727109, registered Oct. 13, 2017). See Compl. Ex. E1-E2. Registration with a trademark authority, such as the UKIPO and EUIPO, confers rights in a mark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”); see also Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”); see also Computop Wirtschaftsinformatik GmbH v. Domain Administrator, FA 1394450 (Forum Aug. 8, 2011) (holding that Complainant has established rights in the COMPUTOP mark for the purposes of Policy ¶ 4(a)(i) based on trademark registrations in Germany and the European Union.). Therefore, the Panel holds that Complainant has established rights in the BITTREX mark.

Next, Complainant contends that Respondent’s <bittrexy.com>, <bittrexv.com>, <bittrexw.com> and <bittrex3.com> domain names are all confusingly similar to Complainant’s BITTREX mark because each appends one letter or numeral and the gTLD “.com” to the fully incorporated mark. The appendage of a letter or number and a gTLD do not negate confusing similarity. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s BITTREX mark.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden 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 the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the 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.”).

First, Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its BITTREX mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the infringing domain names lists “jonas silva bezerra” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by any of the disputed domain names.

Second, Complainant alleges that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <bittrexy.com> and <bittrexv.com> resolve to websites designed to imitate Complainant’s website and are used as part of a fraudulent scheme to obtain customer information. A respondent’s’ use of disputed domain name to pass itself off as a complainant to carry out a fraudulent scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Screenshots indicate that the <bittrexy.com> and <bittrexv.com> domain names resolve to websites that mimic Complainant’s Bittrex Website log-in page and prompt Internet users to disclose their personal log-in information. See Compl. Ex. F1, F2. Therefore, the Panel concludes that Respondent is not using the <bittrexy.com> and <bittrexv.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.

Third, Complainant alleges that the <bittrex3.com> and <bittrexw.com> domain names are inactively held. Failure to make an active use of disputed domain names does not evince a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant contends that the <bittrex3.com> domain resolves to a page stating that the domain has been taken down because the domain holder has not been verified. See Compl. Ex. F3. Complainant also contends that the <bittrexw.com> domain resolves to a page stating the website is not functioning. See Compl. Ex. F4. Therefore, the Panel holds that Respondent is not using the <bittrex3.com> and <bittrexw.com> domain names are not being used in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.

Registration and Use in Bad Faith

Complainant contends that Respondent registered and is using the <bittrexy.com> and <bittrexv.com> domain names in bad faith by attempting to attract Internet users for commercial benefit from the goodwill of the BITTREX mark. Use of a domain name to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the content therein is evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Complainant asserts the screenshots Complainant provided show that the disputed domain names’ resolving website feature a Log In page and Complainant’s BITTREX mark and prompts Internet users into entering their personal log in information. See Compl. Ex. F1, F2. Therefore, the Panel concludes that Respondent registered and is using the <bittrexy.com> and <bittrexv.com> domain names in bad faith pursuant to Policy ¶4(b)(iv).

Next, Complainant asserts Respondent’s use of the domain names indicates that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time the domain names were registered. Actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name is evidence of bad faith. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)); see also 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 and in competition with Complainant.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant asserts Respondent’s confusingly similar domain names, <bittrexy.com> and <bittrexv.com>, resolve to websites that prominently feature Complainant’s BITTREX mark. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time of registration.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bittrexy.com>, <bittrexv.com>, <bittrexw.com>, <bittrex3.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: December 28, 2017