Bittrex, Inc. v. Thomas Muller
Claim Number: FA1801001768933
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Thomas Muller (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com>, registered with NameCheap, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2018; the Forum received payment on January 25, 2018.
On January 26, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.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 February 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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--bttx-vpa4unq.com, postmaster@xn--bttrx-esa2b.com. Also on February 2, 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 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information:
This Complaint is based on Complainant’s BITTREX trademark, which solely and exclusively identifies Complainant. Complainant owns trademark registrations for the BITTREX trademark in the U.S. (Reg. No. 5380786), the U.K. (Reg. No. UK00003231077) and European Union (Reg. No. 016727109), as well as a number of pending applications to register BITTREX worldwide, including U.S. Application No. 87333760.
Complainant is a U.S.-based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark.
Complainant began using the BITTREX mark in U.S. commerce in connection with its cryptocurrency exchange in February of 2014, and has continuously used the BITTREX mark with its services since that date. See Declaration of Bill Shihara in support of this Complaint. Today, Complainant’s cryptocurrency exchange is the third largest cryptocurrency exchange in the world, as measured by assets traded. Complainant’s cryptocurrency exchange has more than 1,400,000 users based in 60 countries throughout the world. Id. at ¶5. In addition, 200 digital tokens are currently being traded on Bittrex, amounting to a trading volume of 500,000,000 US dollars.
Complainant has spent substantial time, effort and money promoting the BITTREX mark in the U.S. and worldwide. As a result, the BITTREX mark has enjoyed widespread international recognition and consumers associate the BITTREX brand exclusively with Complainant. For example, when conducting a Twitter search for “BITTREX,” all of the search results revealed in the initial eleven pages of the search refer to Complainant.
The media also recognizes Complainant’s exclusive rights in the BITTREX trademark-- specifically, every current news article disclosed in a Google search for “BITTREX” refers to Complainant.
Complainant currently owns a registration for the domain name <bittrex.com> (the “Bittrex Domain”). Complainant began using the Bittrex Domain in connection with its business in 2014 and has continuously done so since that time. Complainant’s website, which it uses in connection with its business, prominently displays the BITTREX mark and is located at the Bittrex Domain (the “Bittrex Website”).
UDRP Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is premised on Respondent’s malicious and dangerous use of the Disputed Domains to impersonate Complainant in order to fraudulently obtain Complainant customers’ user identification and password credentials and steal from their cryptocurrency accounts, or otherwise engage in illegal activity. Specifically, Respondent’s websites are a direct copy of the Bittrex Website, and prompt consumers to enter their login credentials. Compare Screenshots of the Bittrex Website with screenshots of the websites operated at the Disputed Domains. Complainant files this Complaint to stop Respondent’s illegal and fraudulent conduct and to transfer the Disputed Domain.
[a.] The Disputed Domains Are Confusingly Similar to Complainant’s BITTREX Trademark
[i.] The 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, and adoption of the Disputed Domains evidences an intent to pass-off the Disputed Domains as the Complainant’s domain in order to lure victims into the phishing scam. See Damien Persohn c/o CPPD SAS/Têtu v. Lim c/o Webxel Consulting Pte. Ltd., FA874447 (Forum Jan. 9, 2007) (noting that past panels have found IDNs and their Punycode translations to be equivalent for the purposes of assessing identity or confusing similarity and holding respondent engaged in bad faith where it used the <têtu.com> domain name to redirect Internet users to other websites for commercial gain); MTS Inc. d/b/a Tower Records v. John Zuccarini d/b/a Cupcake Patrol, FA0107000098343 (Forum Sept. 17, 2001) (holding that domain name that is misspelled version of complainant’s mark is confusing similar). Thus, the Disputed Domain is confusingly similar to Complainant’s registered BITTREX mark under Policy ¶4(a)(i).
[ii.] Respondent registered the Disputed Domains on January 10, 2018 and January 11, 2018 (respectively), whereas Complainant first used the BITTREX mark in connection with its business in 2014. Additionally, Complainant filed its earliest trademark application in February 2017. Complainant’s rights in the BITTREX mark predate the registration date of the Disputed Domain and Complainant clearly has priority in the BITTREX trademark.
[b.] The Respondent Has No Rights or Legitimate Interests in the Disputed Domains
[i.] A complainant must show that a respondent has “no rights or legitimate interests in respect of the domain name.” UDRP Rule 3(b)(ix)(2). Here, Respondent has no license or authorization to use the BITTREX mark and are not commonly known by the Disputed Domains or any variant of the BITTREX mark. 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); Tercent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (stating that “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” is one factor in determining that Policy ¶4(c)(ii) does not apply).
[ii.] In addition, Respondent has not and is not using the Disputed Domains in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the Disputed Domains as part of a fraudulent phishing scheme to obtain customer information by replicating the Bittrex Website and impersonating Bittrex. The Disputed Domains both resolve to a copy-cat website with an identical home page to Complainant’s home page and identical log-in pages seeking customer credentials. In connection with Disputed Domain Bíttŕēx.com [XN-- BTTX-VPA4UNQ.COM], Respondent placed a Google Ad impersonating Complainant and directed Internet users away from Complainant’s site to Respondent’s fraudulent phishing scam site.
Respondent’s fraudulent and illegal activity demonstrates Respondent’s lack of legitimate interest in the Disputed Domains. See, e.g., Bechtel Grp., Inc. v. Dudley, FA 1636223 (Forum Oct. 12, 2015) (noting that it is well-settled that “the use of a confusingly similar domain name in a fraudulent e-mail scheme” and/or “to pass [one]self off as the complainant,” amounts “to a lack of rights or legitimate interests”); Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking complainant’s financial services was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (finding the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent used the domain to present users with a website that was nearly identical to the complainant’s website); Blackstone TM L.L.C. v. Mita Ireland Ltd. c/o Michael Boutenko, FA 1314998 (Forum Apr. 30, 2010) (A respondent’s use of a domain name to “phish” for users’ information is was neither a bona fide offering of goods or services or a legitimate noncommercial or fair use).
[iii.] Therefore, Respondent has no rights or legitimate interests in the Disputed Domains.
[c.] The Disputed Domains Were Registered and Are Used in Bad Faith
[i.] Respondent’s actions make clear that the Disputed Domains were registered and are being used in bad faith. Policy ¶4(b). Specifically, Respondent registered and is using the Disputed Domains to redirect Internet users to websites that directly copy the Bittrex Website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Prior panels have held that use of a domain name to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant constitutes bad faith. Policy ¶4(b)(iv). See, e.g., Yahoo! Inc. v. Dank, FA 203169 (Forum Dec. 6, 2003) (finding respondent’s use of the disputed domain name for an information theft scam and illegal commercial gain constituted bad faith); Wells Fargo & Co. v. Above.com Domain Privacy, FA 1592062 (Forum Jan. 4, 2015) (finding bad faith in creating a false association with complainant and operating a phishing scheme to obtain personal information); Smiths Grp. plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (“Respondent disrupts Complainant’s business by using the Domain Name to pass itself off as Complainant for Respondent’s fraudulent commercial gain.”); Regents of the Univ. of Mich. v. VistaPrint Tech. Ltd., FA 1460764 (Forum Oct. 5, 2012) (“The Panel finds that Respondent’s fraudulent attempts to pass itself off as Complainant constitute evidence of bad faith registration and use.”).
[ii.] Respondent’s copying of the Complainant’s website shows that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the Disputed Domains and, in turn, is evidence of bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); Brownell Travel, Inc. v. Troy Haas, FA 1589137 (Forum Dec. 20, 2014).
[iii.] Respondent’s copious use of the BITTREX mark in connection with a confusingly similar domain name and cloned website creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain. Respondent’s attempt to attract Internet users for commercial gain is also evidence of bad faith under Policy ¶4(b)(iv). See 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.”).
[v.] Therefore, Respondent registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Respondents
Complainant originally claimed the entities which control the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Once the Registrar dropped the WHOIS privacy protection, it became clear both domain names were registered by the same person, Thomas Muller.
Complainant claims rights in the BITTREX mark due to its registration of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) and the European Union Intellectual Property Office (“EUIPO”) (UKIPO—Reg. No. UK00003231077, registered Oct. 6, 2017, effective date May 15, 2017; EUIPO—Reg. No. 016727109, registered Oct. 13, 2017, filed May 15, 2017). Registration with a governmental trademark agency, such as the UKIPO or the EUIPO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. 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.”). Complainant has established sufficient rights to the BITTREX mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names are confusingly similar to Complainant’s mark. Both domain names add accent marks above or below certain letters, and both add the gTLD “.com.” The Disputed Domains are internationalized domain names (“IDN”). In order to display characters or symbols in the domain name, such as the accent above the “i” (i.e., “ï”) for the Disputed Domain Bïttréx.com, the terms of the domain name are encoded into a scheme, such as Punycode, and expressed as letters and numbers, i.e., XN--BTTRX-ESA2B.COM. Such changes in a domain name do not sufficiently distinguish them from registered marks under Policy ¶4(a)(i). See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶4(a)(i) analysis of confusing similarity”); 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). The <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names are confusingly similar to the BITTREX mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS currently identifies “Thomas Muller” as the registrant for both domain names. No evidence exists to show Respondent has ever been legitimately known by the BITTREX mark. There is no obvious connection between Respondent’s name and the disputed domain names. See 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). Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Respondent is not commonly known by the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent attempts to pass himself off as Complainant to engage in a phishing scheme to obtain personal information from Complainant’s users. Engaging in a phishing scheme does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Respondent’s attempts to pass himself off as Complainant to fraudulently acquire personal information from unsuspecting users does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
Furthermore, Respondent registered the disputed domain names using a WHOIS privacy service. This means Respondent has not publicly associated himself with the disputed domain names. Respondent cannot acquire any rights because he has not publicly associated himself with the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names in bad faith by directing Internet users to a website that mimics Complainant’s own website to confuse users into believing Respondent is Complainant. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain constitutes bad faith under Policy ¶4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Respondent’s attempts to commercially benefit off Complainant’s mark constitute bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent uses the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names to further a phishing scheme to defraud Complainant’s users. Phishing schemes constitute bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).”). The screenshots of Complaint’s landing page along with the landing pages of Respondent’s two web sites clearly show Respondent was trying to imitate the look and feel of Complainant’s website (including the login portion). Respondent attempts to pass himself off as Complainant to phish for Complainant’s user’s personal information. This constitutes bad faith registration and use under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s BITTREX mark at the time it registered the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names. In light of the copying involved, Respondent clearly knew of Complainant’s mark because Respondent copied Complainant’s website (with a high degree of fidelity). This constitutes bad faith registration and use 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). Respondent has actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
Respondent registered the disputed domain names using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, the Panel is content to find bad faith on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <xn--bttx-vpa4unq.com> and <xn--bttrx-esa2b.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 26, 2018
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