Bittrex, Inc. v. rubex money
Claim Number: FA1801001765736
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is rubex money (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cryptobittrex.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2018; the Forum received payment on January 5, 2018.
On January 8, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cryptobittrex.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 January 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 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@cryptobittrex.com. Also on January 11, 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 February 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <cryptobittrex.com> domain name is confusingly similar to Complainant’s BITTREX mark.
2. Respondent does not have any rights or legitimate interests in the <cryptobittrex.com> domain name.
3. Respondent registered and uses the <cryptobittrex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bittrex, Inc., is a U.S.-based company that uses the BITTREX mark to operate a leading cryptocurrency exchange. Complainant has rights in the BITTREX mark through registration of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003231077, registered Oct. 6, 2017, filed May 15, 2017) and the European Union Intellectual Property Office (”EUIPO”) (Reg. No. 016727109, registered Oct. 13, 2017, filed May 15, 2017).
Respondent registered the <cryptobittrex.com> domain name on September 29, 2017, and uses it to redirect users to a competing website.
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 claims rights in the BITTREX mark due to its registration of the mark with the UKIPO and the EUIPO. Registration of a mark with a trademark agency, such as the UKIPO or EUIPO, is generally sufficient to establish rights in a mark for purposes of Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.); 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.”). Further, rights in a registered mark extend back to the application filing date of the mark. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). Accordingly, the Panel finds that Complainant has established rights in the BITTREX mark that predate Respondent’s registration of the disputed domain name.
Respondent’s <cryptobittrex.com> domain name contains the entire BITTREX mark and merely adds the generic or descriptive term “crypto” and the gTLD “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark 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). Thus, the Panel finds that Respondent’s <cryptobittrex.com> domain name is confusingly similar to Complainant’s BITTREX mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <cryptobittrex.com> domain name. Complainant alleges that Respondent is not legitimately affiliated with Complainant, and is not known by the disputed domain name. Complainant has not given Respondent permission to use the mark in any manner. The WHOIS identifies “rubex money” as the registrant of the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <cryptobittrex.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant, and provides a screenshot of the resolving website that displays the name “CryptoBittrex” along with the message “Start mining with Cryptobittrex today.” Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to demonstrate rights and legitimate interests to a respondent. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent uses the domain name to directly compete with Complainant, failing to use the <cryptobittrex.com> domain name for 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).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and uses the <cryptobittrex.com> domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to offer competing services for its own commercial gain. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See 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).”). The Panel thus finds that Respondent attempts to commercially benefit by using Complainant’s mark, in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent must have had actual knowledge of the mark based on Respondent’s use of its mark to offer services in direct competition with Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <cryptobittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 8, 2018
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