Bittrex, Inc. v. Thomas Muller
Claim Number: FA1801001769991
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 NAME
The domain name at issue is <xn--ttrex-ysa9423c.com>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2018; the Forum received payment on January 31, 2018.
On February 1, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--ttrex-ysa9423c.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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--ttrex-ysa9423c.com. Also on February 5, 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 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Bittrex, Inc., is a U.S.-based company which uses the BITTREX mark to operate one of the leading cryptocurrency exchanges in the world. Complainant has rights in the BITTREX mark through 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).
2. Respondent’s <xn--ttrex-ysa9423c.com>[1] domain name is confusingly similar to Complainant’s BITTREX mark as it adds a diacritic under the “B,” an accent mark above the “I”, and the generic top-level domain (“gTLD”) “.com.”[2]
3. Respondent has no rights or legitimate interests in the <xn--ttrex-ysa9423c.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use the BITTREX mark in any manner.
4. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name in furtherance of a phishing scheme to obtain customer information. Further, Respondent uses the domain name to host a parked webpage.
5. Respondent registered and is using the <xn--ttrex-ysa9423c.com> domain name in bad faith. Respondent registered and uses the nearly identical domain name to direct Internet users to a parked website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Further, Respondent uses the domain name to phish for users’ information. Additionally, such use indicates Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITTREX mark. Respondent’s domain name is confusingly similar to Complainant’s BITTREX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <xn--ttrex-ysa9423c.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the BITTREX mark due to its registration of the mark with the UKIPO and the 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 of a mark with a trademark agency, such as the UKIPO or EUIPO, is regarded as proving sufficient rights to a mark per 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 mark which is eventually registered may 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 determines Complainant has established sufficient rights to the BITTREX mark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <xn--ttrex-ysa9423c.com> domain name is confusingly similar to Complainant’s mark as it adds a diacritic under the “B,” an accent mark above the “I”, and the gTLD “.com.” Similar changes in registered marks have failed to sufficiently distinguish a domain name for the purposes of 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 Panel therefore finds that the <xn--ttrex-ysa9423c.com> domain name is confusingly similar to the BITTREX mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <xn--ttrex-ysa9423c.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <xn--ttrex-ysa9423c.com> domain name. 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 identifies “Thomas Muller” as the registrant. See Amend. Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BITTREX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <xn--ttrex-ysa9423c.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <xn--ttrex-ysa9423c.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent attempts to engage in a phishing scheme to obtain information from users. Evidence of a phishing scheme shows a lack of rights and legitimate interests in a domain name. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides a list of various domain names associated with phishing schemes, and the list contains the infringing domain name. Thus, the Panel agrees that Respondent attempts to fraudulently acquire personal information from unsuspecting users, thereby failing to use the domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also has shown that Respondent uses the <xn--ttrex-ysa9423c.com> domain name to resolve to a parked website. Using a domain name which contains the mark of another to host a parked website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel finds that Respondent uses the domain name to host a parked webpage, thus failing to make 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has provided evidence that Respondent uses the <xn--ttrex-ysa9423c.com> domain name to further a phishing scheme intended to defraud users. Phishing schemes show 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).”). Complainant has provided a list of various domain names associated with phishing schemes, and the list contains the domain name at-issue in the instant proceeding. Thus, the Panel may agrees that Respondent attempts to phish for information in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s BITTREX mark at the time it registered the domain name. Actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name shows 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 agrees that Respondent must have had actual knowledge of the mark based on Respondent’s use of the BITTREX mark on the resolving website.
The Panel finds 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 <xn--ttrex-ysa9423c.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 12, 2018
[1]Respondent registered the domain name on January 13, 2018.
[2] The domain name is an internationalized domain name. In order to display characters or symbols in the domain name, such as the diacritic under the “B” and the accent over the “i”--Ḅíttrex.com--the terms of the domain name are encoded into a scheme, such as Punycode, and expressed as letters and numbers, i.e., xn--ttrexysa9423c.com.
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