DECISION

 

Bittrex, Inc. v. clayt closiner / Caly Company. / bittrex acc

Claim Number: FA1801001766167

 

PARTIES

Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA.  Respondent is clayt closiner / Caly Company. / bittrex acc (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <xn--bitrex-y97b.com> and <xn--itrex-r90b04a.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 9, 2018; the Forum received payment on January 9, 2018.

 

On Jan 10, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--bitrex-y97b.com> and <xn--itrex-r90b04a.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@xn--bitrex-y97b.com, postmaster@xn--itrex-r90b04a.com.  Also on January 16, 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 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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

A.   Complainant

Complainant asserts trademark rights in BITTREX and alleges that the disputed domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding. 

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant uses the trademark BITTREX in connection with its business providing a cryptocurrency exchange;

2.    Complainant holds, inter alia, United Kingdom Intellectual Property Office (“UKIPO”) Reg. No. UK00003231077, registered June 10, 2017, for the trademark BITTREX;

3.    the disputed domain name <xn--bitrex-y97b.com> was created on December 26, 2017 and the registrant is listed as “bittrex acc”;

4.    the disputed domain name  <xn--itrex-r90b04a.com> was created on January 5, 2018 and the registrant is listed as “clayt closiner / Caly Company”;

5.    the domain name <xn--bitrex-y97b.com> resolves to a website which reproduces the homepage of Complainant’s official website;

6.    the domain name <xn--itrex-r90b04a.com> resolves to a webpage which reproduces the log-in page of Complainant’s official website; and

7.    there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

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."

 

Preliminary procedural issue: Multiple respondents

Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”

 

Complainant alleges that the domain name holders are either aliases for one person or entity, or are effectively controlled by the one person or entity.  In support thereof, Complainant argues that the domain names were registered with the one registrar and were created within ten days of each other.  Further, it is said that both are “highly similar internationalized domain names” and that they both use “copy-cat pages from Complainant’s website”.

In the absence of a Response the Panel finds sufficient evidence that, for the purposes of paragraph 3(c) of the Rules, the disputed domain names were registered by the one entity.  Hereinafter, the term “Respondent” is used to refer collectively to the registrants of the disputed domain names.

 

Primary Issues

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.

 

(i) Trademark Rights / Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [i]   Since Complainant evidences its registration of the trademark with UKIPO the Panel finds that it has shown trademark rights.

 

Complainant submits that the disputed domain names are confusingly similar to the trademark “because they wholly incorporate [the trademark] and add only accent marks above or below certain letters”.  Complainant further states that the domain names “are functionally identical” to the trademark. 

 

It is not possible to make sense of those submissions until it is understood that throughout the Complaint the names 

 

           

(the “Decoded Names”) are treated by Complainant as being the disputed domain names  – i.e. – as interchangeable substitutes, respectively, for the disputed domain names <xn--bitrex-y97b.com> and <xn--itrex-r90b04a.com>.  A footnote explains that:

 

“the Disputed Domains[ii] are internationalized domain names (“IDN”).  In order to display characters or symbols in the domain name, such as the accent above the second “t” … the terms of the domain name are encoded into a scheme, such as Punycode”.

 

There is no explanation of how that scheme operates, nor a demonstration of how the disputed domain names in fact correspond with the Decoded Names. The Complaint cites two cases.  The first is MTS Inc d/b/a Tower Records v. John Zuccarini d/b/a Cupcake Patrol, FA0107000098434 (Forum September 17, 2001) which concerned the domain name, <towerrecods.com>.  In that case the panel held the name to be confusingly similar to the complainant’s registered TOWER RECORDS mark because:

 

“it merely represents a misspelling of Complainant’s mark. The <towerrecods.com> domain name materially differs from Complainant’s TOWER RECORDS mark only in the fact that the disputed domain name fails to include the second ‘r’ in the word ‘records’.” 

 

Given that the disputed domain names in these administrative proceedings would not ordinarily be characterized as misspellings of BITTREX the Panel does not find this citation of assistance. 

 

The other is Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, FA0612000874447 (Forum February 19, 2007) (“Persohn”) where the panel ordered transfer of the domain name <xn--ttu-fma.com> having found, for the purposes of paragraph 4(a)(i), that name to be confusingly similar to the complainant’s registered TÊTU trademark.  As a preliminary issue before reaching its decision the panel wrote:

 

“The domain name in dispute, <têtu.com>[1], is an internationalized domain name (“IDN”) with the Punycode translation of <xn--ttu-fma.com>.  An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or non-Latin characters.  In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as Punycode.  For Complainant to display the letter “ê” with the diacritic in the <têtu.com> domain name, it first had to encode it into the <xn--ttu-fma.com> domain name.

 

In the past, panels have found IDNs and their Punycode translations to be equivalent.  See Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the  <xn--zqsv0e014e.com> domain name to be an exact reproduction of Complainant’s Chinese trademark in a domain name).  This Panel finds that the <têtu.com> domain name is one and the same with its Punycode translation, <xn--ttu-fma.com>, for purposes of this proceeding.”

 

What is noteworthy from the Procedural History in Persohn is that the registrar had confirmed in writing to the Forum that “the PUNYCODE equivalent of the <têtu.com> domain name [xn--ttu-fma.com] is registered with eNom, Inc.”  That is not the case here.  On January 10, 2018, the Forum wrote to NameCheap, Inc. asking certain questions but it did not seek or obtain confirmation of how the domain names would be decoded. 

 

Panel  Order  /  Additional Submissions

The aim of the Policy is to provide a quick and effective means of combating abusive domain name registration and so Panel Orders should be made sparingly.  Whilst in these undefended proceedings the Panel can give weight to Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw inferences it considers appropriate pursuant to paragraph 14(b) of the Rules[iii], the issue which arises here goes to the identity of the domain names and is fundamental.  The Panel therefore took the view that Complainant should be allowed to provide further and better particulars of its paragraph 4(a)(i) claims.  It was so invited and Respondent allowed the chance to comment on anything received.  The terms of the Panel Order were that:

 

“Pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Complainant is hereby requested provide further and better particulars of the assertion that the disputed domain names “add only accent marks above or below certain letters of Complainant’s trademark” and have it e-mailed to the Forum and Complainant no later than 3/1/2018. The Respondent will have until 3/4/2018 to submit any response to the newly requested information from Complainant.”

Complainant availed itself of that opportunity within the time frame set by the Panel Order and provided additional submissions together with a declaratory statement.  Nothing was received from Respondent.

 

The additional submissions range over matters outside the information sought but to the extent that they address the Panel Order, they explain that when a domain name makes use of accent marks associated with certain languages it is registered as “a Punycode expression that is translated to the special character when displayed in the URL. When one registers an IDN domain, the system automatically converts the domain name into Punycode for the encoded version of the domain name to be registered. Then when the user enters a URL containing an IDN domain name into the web browser, it will be convert the IDN domain into Punycode and resolve that domain.”  This explanation is taken essentially verbatim from the Registrar’s website, the pertinent page of which is exhibited to a declaratory statement made by Complainant’s representative.

 

Complainant asserts that “[w]hen displayed in a URL or in a Google search for ‘BITTEX’, the Disputed Domains are, for all intents and purposes, identical to the BITTREX trademark.”  Complainant goes on to state that “[p]ast panels have found IDN domains and their Punycode translations to be equivalent for the purposes of assessing identity or confusing similarity.”  Further citations are given for that proposition.

 

The Panel finds that Complainant’s submissions are deficient at least to the extent that nowhere is there any evidence that the Decoded Names in fact correspond with the respective domain names.  That putative equivalence is based on mere assertion.  Proper evidence would have shown how the Punycode scheme operated with respect to the actual domain names.  For this reason alone the Complaint might fail.

 

Additional decisions cited by Complainant were the very recent case of Bittrex, Inc. v. Thomas Muller, FA1801001768933 (Forum February 26, 2018) and the case of NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (“Nike”).

 

Muller concerned the domain names <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> and, much like the present case, Complainant’s submissions were that:

 

“[t]he Disputed Domains are confusingly similar to Complainant’s BITTREX trademark because they wholly incorporate Complainant’s BITTREX mark and add only accent marks above or below certain letters, such as the “i” and the “e” in both domains (i.e., Bíttŕēx.com Bïttréx.com). Such minor— deliberately difficult to detect—differences are clearly insufficient to mitigate this confusing similarity. Indeed, the Disputed Domains are functionally identical to the BITTREX trademark…”

 

The Muller panel accepted that submission and cited Nike in support.  In that earlier case the at-issue domain name was <xn--nke-jua.com>.  The then complainant’s submission was that “<nıke.com> is identical to the NIKE mark because it replaces the letter “I” in the mark with the non-ANSII Turkish dotless “ı” which is visually identical to Complainant’s mark …”.  As a preliminary issue the Nike panelist wrote:

 

“According to Complainant, the ‘I’ in <nıke.com> represents the non-ANSII Turkish dotless ‘ı’ character and falls within the category of domains known as ‘nternationalized domain names’ (“IDN”s). The domain name, as seen in the WHOIS information of record, is translated in Punycode as <xn--nke-jua.com>. Panels have treated Punycode iterations of domain names in an identical manner with their IDN counterparts. … Therefore, the Panel determines that proceeding to analyze the IDN <nıke.com> rather than its Punycode <xn--nke-jua.com> is proper as they are equivalent.”

 

The Panel observes that in neither Muller nor Nike is it entirely clear on what actual evidence the decisions proceeded.  There is no mention in either case of the registrar having “decoded” (as it did in Persohn ) the registered Punycode domain name as the relevant trademark or as anything else.  There is no mention of whether or not the complainant provided evidence of the matter.  Further, in neither case is reasoned consideration given to the question of whether, for the purposes of the Policy, an IDN expressed and registered in its Punycode form which bears no visual or phonetic resemblance to the at-issue trademark should be considered as either “identical” or “confusingly similar” to that trademark (“in law”, as it would be put in other fora).

 

The most helpful case the Panel located was Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov (WIPO Case D2011-0100) (“Porsche”).  The factual background was that “[t]he disputed domain name, <порше.com>, or <xn--e1arcf4b.com> in ‘punycode’, is an internationalized domain name (IDN). Relevantly represented in Cyrillic, the disputed domain name, in Latin script, translates as ‘porsche’.”

 

The paragraph 4(a)(i) discussion from Porsche is set out in full below:

 

“There is no dispute that the Complainant relevantly has rights in its PORSCHE mark in various jurisdictions. The Complainant admits that it does not have a registered Cyrillic mark equivalent. Therefore the principal issue in this case is whether the disputed domain name, represented in Cyrillic script, is confusingly similar to the Complainant’s PORSCHE mark. As the domain name is represented in Cyrillic script, it is not identical to the Complainant’s mark.

 

The Complainant has demonstrated that the disputed domain name is an exact transcription of the lettering of its trademark. The Complainant points to previous decisions under the Policy which found IDNs and their punycode translations to be equivalent for the purpose of determining confusing similarity. In particular, the Complainant refers to FUJITSU LIMITED. v. tete and Lianqiu Li, WIPO Case No. D2006-0885. However in that case, the Complainant owned registered marks for both ASCII and ‘non-ASCII’ (IDN-represented) marks: being the marks FUJITSU and 富士通 respectively. The Complainant in this case does not own a ‘non-ASCII’ mark.

 

The Complainant refers to Yahoo! Inc. v. Sergey Korshunov, NAF Claim No. 1176666. However in that case, the then complainant was the registrant of a trademark which included three Cyrillic letters which were a phonetic equivalent of the ASCII component of its mark. The then panel found that there was confusing similarity as the domain name contained a portion of the then complainant’s mark (i.e. the Cyrillic component of the mark). In this case, the Complainant’s mark does not include Cyrillic lettering, in whole or part.

 

The Complainant also refers to Seiko Epson Corporation and Epson America, Inc. v. Chiu Tien Fu and Tien Fu Chiu, NAF Claim No. 1314017. In that case, the then panel found that a non-ASCII domain name (<爱 普 生.com>) was identical to its ASCII “transliteration” (EPSON). However, this Panel can find no reasoning in that case for this conclusion. Neither is there an explanation as to how a combination of three Chinese / Kanji characters can, phonetically or otherwise, be identical to a mark represented in Latin script. In this Panel’s view, it is one thing to find that a non-ASCII domain name is equivalent to its punycode. It is another thing to find that a non-ASCII domain name is equivalent to an ASCII mark (i.e., a mark represented in Latin script).

 

The Complainant’s argument in this case is that the non-ASCII domain name in dispute is equivalent to its ASCII mark. The Complainant argues that the Cyrillic (non-ASCII) equivalent of its mark is confusingly similar to its mark. The Complainant does not own registrations in the Cyrillic script. In effect, the Complainant argues that this does not matter.

The Panel nevertheless finds that the disputed domain name is confusingly similar to the Complainant’s well-known mark. The reason for this is based on first principles. Under paragraph 4(a)(i) of the Policy, the issue is whether there is a likelihood of confusion in the mind of Internet users. As noted by the panel in Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776, the question “is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is “confusingly similar” to the Complainant’s mark. Initial confusion by an Internet user when seeing or typing the disputed domain name is the focus of paragraph 4(a)(i).”

 

In this case, the disputed domain name is not visually similar or identical to the Complainant’s mark. The Complainant claims that the disputed domain name is phonetically similar to its mark. However, in the Panel’s view, it does not follow from the Complainant’s evidence that the disputed domain name transcribes the sound of its mark in Cyrillic. Is it, for example, phonetically similar in Russian to the way its mark would sound in German or English? The Complainant does not say. Regardless, the Complainant provided evidence that the disputed domain name is a transliteration of its PORSCHE mark. The Complainant’s mark is very well-known, and this is recognized in a series of prior decisions under the Policy in the Complainant’s favor (including those cited above). The number of prior cases under the Policy involving the Complainant’s mark is itself an indication that the Complainant is an attractive target for cybersquatters.

 

The fame of the Complainant’s mark, combined with its transliteration in the disputed domain name, suggests to the Panel that the domain name would create confusion in the minds of Internet users that might be searching for the Complainant. There was no evidence in this case that, represented in Cyrillic, the disputed domain name has any association other than with the Complainant’s mark. As such, the Panel has inferred that an ordinary Internet user reading the domain name in Cyrillic, would be likely to associate it with the Complainant’s mark. The circumstances of this case therefore indicate that Internet users would be confused about the relationship between the disputed domain name and the Complainant’s mark. Ultimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark. Phonetic or visual similarity may be factual indicators of such confusion. There may be other facts which suggest a likelihood of confusion. The Panel considers that the relevant facts of this case are suggestive of such confusion.

 

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

 

The Porsche decision resulted in transfer of the disputed domain name but, as in Persohn, there was evidence before the panel that the domain name directly corresponded with the at-issue trademark.  Further, the decision explores the critical question of whether a Punycode domain name can be treated for the purposes of the Policy as being the same or confusingly similar to the relevant trademark.  In doing so, it goes considerably further than the cases cited by Complainant in these proceedings. 

 

Although Porsche finds for the complainant and so, at least in the eyes of this Panel, reached what clearly seems the right outcome in that case, there are potential tensions in the reasoning.  For example, whilst there can be no argument that PORSCHE is a well-known trademark, there most certainly remains, as the Porsche panelist would have known, a long and unresolved question as to whether, for the purposes of paragraph 4(a)(i), the repute of the trademark is a factor to be taken into account in the determination of confusing similarity.  Furthermore, whilst trademark jurisprudence carries with it a lengthy debate as to whether trademarks function essentially as so-called “badges of origin” or “badges of control” (the former paradigm being founded on principles of consumer protection), the evolution of decisions under the Policy has been much shorter and so the statement in Porsche that “[u]nder paragraph 4(a)(i) of the Policy, the issue is whether there is a likelihood of confusion in the mind of Internet users” might be a way in which panels have approached paragraph 4(a)(i), but it is not, by way of counter-example, how so-called “sucks” cases have been generally reasoned (there being almost no likelihood of consumer confusion in those cases).

 

So whilst the Porsche decision would seem to be the right one on the facts, it is not the first UDRP case to have struggled at one level or another with the economic wording of the Policy. 

 

In the end it is Complainant which bears the onus to establish the elements of the Policy even in these undefended proceedings.  Whilst the Panel might on balance accept certain uncontested assertions, it is not willing to accept a claim that the disputed domain names correspond with the BITTREX trademark[iv] without evidence of the matter.  The Complaint failed to provide that evidence.  The response to the Panel Order failed to do so.  The prior UDRP decisions relied upon by Complainant either did include that type of evidence, or assumed without discussion that the “technical” equivalence of the at-issue trademark and its Punycode iteration was tantamount to a paragraph 4(a)(i) finding that those same terms were identical or confusingly similar.  Porsche suggests they are not and this Panel is in agreement. 

 

It follows that the assessment of confusing similarity in these proceedings can only be made on a side by side comparison of the trademark with the disputed domain names as they are registered and shown in the WhoIs database.  For that purpose it is well accepted that the gTLD, “.com” can be disregarded.[v]  The comparison then resolves to the trademark BITTREX with the follows terms:

 

xn--bitrex-y97b

xn--itrex-r90b04a

 

All that might be said from a visual and aural inspection is that the misspelt rendition of the trademark (bitrex) in the first term stands out from the collocation of letters and numbers such that it is reasonable to draw the finding that the compared terms are confusingly similar.  On the other hand, the second term is little more than a cacophony of letters and numbers having no bond with the trademark and unlikely to cause any possibility of confusion. 

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to the disputed domain name, <xn--bitrex-y97b.com>, but has not satisfied paragraph 4(a)(i) with respect to the disputed domain name, <xn--itrex-r90b04a.com>. 

 

It follows that the Complaint fails against the name, <xn--itrex-r90b04a.com>.  In the discussion of paragraphs 4(a)(ii) and (iii) which follows, facts uniquely connected with the use of the name  <xn--itrex-r90b04a.com> have been disregarded and the reasoning and references are limited to the domain name, <xn--bitrex-y97b.com>.

 

(ii)  Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vi]

 

The publicly available WHOIS information lists the <xn--bitrex-y97b.com> domain name registrant as “bittrex acc”.  However, the Panel has already accepted, for the purposes of Rule 3(c), Complainant’s allegation that the disputed domain name holders are aliases for a single, unknown person or entity and so the Panel is not prepared to draw an inference based simply on the WhoIs data that Respondent might be commonly known by the disputed domain name.

 

There is no evidence that Respondent has any trademark rights.  There has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name.  On the contrary, the evidence is that the <xn--bitrex-y97b.com> domain name resolves to a website which reproduces the homepage of Complainant’s official website.  In so doing it attempts to pass itself off as part of Complainant’s web presence.  The Panel finds that Complainant has made a prima facie case.[vii]

 

The onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that prima facie case is met and so the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

(iii)  Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

 

The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above.  The domain name is confusingly similar to Complainant’s trademark.  The “copy-cat” homepage clearly shows that Respondent targeted Complainant and its trademark.  The resolving webpage exists for commercial gain in one form or another.  The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.[viii]

 

DECISION

Having established all three elements required under the ICANN Policy with respect to the <xn--bitrex-y97b.com> domain name, the Panel concludes that relief shall be GRANTED.  Accordingly, it is Ordered that the <xn--bitrex-y97b.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Having failed to establish at least one of the three elements required under the ICANN Policy with respect to the <xn--itrex-r90b04a.com> domain name, the Panel concludes that relief shall be DENIED.  Accordingly, it is Ordered that the <xn--itrex-r90b04a.com> domain name REMAIN WITH Respondent.

 

 

Debrett G. Lyons, Panelist

Dated:  March 8, 2018