Bittrex, Inc. v. I S / ICS INC
Claim Number: FA1802001770166
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitrexx.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2018; the Forum received payment on February 1, 2018.
On February 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitrexx.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 February 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@bitrexx.com. Also on February 7, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
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) Further, Complainant has common law rights in the BITTREX mark dating back to 2014, when it began using the mark in commerce, as Complainant has spent substantial time, effort, and money promoting the BITTREX mark and has gained widespread international recognition. Respondent’s <bitrexx.com> domain name is confusingly similar to Complainant’s BITTREX mark as the domain name omits a “t” and adds the letter “x.”
Respondent has no rights or legitimate interests in the <bitrexx.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the BITTREX mark in any manner. Respondent’s use of the disputed 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 connection with a fast flux DNS (“FFDNS”) scheme to rapidly redirect users through a series of URLs before resolving in a website which installs malware in order to phish for customer information. Further, Respondent has offered the domain name for sale in excess of out-of-pocket expenses.
Respondent registered and is using the <bitrexx.com> domain name in bad faith. Respondent uses the domain name in connection with a FFDNS scheme to rapidly redirect users through a series of URLs before resolving in a website which installs malware in order to phish for customer information. This use of the domain name disrupts Complainant’s business and attempts to attract Internet users to the website for Respondent’s commercial gain. Further, 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.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <bitrexx.com> domain name.
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 (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 often 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.”). 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.”).
Complainant claims it holds common law rights in the BITTREX mark. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims it has common law rights in the BITTREX mark dating back to 2014, when it began using the mark in commerce, as Complainant has spent substantial time, effort, and money promoting the BITTREX mark and has gained widespread international recognition. The Panel finds from Complainant’s uncontested allegations and evidence that Complainant does hold common law rights in the BITTREX mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bitrexx.com> domain name is confusingly similar to Complainant’s mark as the domain name omits a “t” and adds the letter “x.” The domain name also adds the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds that the <bitrexx.com> domain name is confusingly similar to the BITTREX mark under Policy ¶4(a)(i).
Complainant has proved this element.
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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <bitrexx.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 “I S / ICS INC” as the registrant. 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 finds Respondent is not commonly known by the <bitrexx.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <bitrexx.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in connection with a FFDNS scheme to rapidly redirect users through a series of URLs before resolving in a website which installs malware in order to phish for customer information. FFDNS schemes and fraudulently installing malware in furtherance of a phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name.). Complainant provides a screenshot of the resolving domain, which displays the message “Error: Unknown System Failure!” and prompts users to click the “OK” button, which Complainant alleges is to install malware onto the user’s computer. The Panel finds Respondent engages in a FFDNS scheme to install malware onto users’ computers, and lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <bitrexx.com> domain name in bad faith by disrupting Complainant’s business and attempts to attract Internet users to the website for Respondent’s commercial gain in order to install malware onto users’ computers through the use of a FFDNS scheme. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. v. Private Registration- Rnew, FA 1365571 (Forum, Feb. 9, 2011) (“[R]egistration and use of the disputed domain name to redirect Internet users to a series of websites offering products in competition with [c]omplainant constitutes a disruption of [c]omplainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum Nov. 9, 2015) (“Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name” where “Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer.”). As stated above, Complainant provided a screenshot of the resolving domain, which displays the message “Error: Unknown System Failure!” and prompts users to click the “OK” button, which Complainant alleges is to install malware onto the user’s computer. The Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark, and finds bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent uses the <bitrexx.com> domain name to further a phishing scheme intended to defraud users. Phishing schemes can evince 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 alleges that Respondent obtains personal information from users through the installation of malware on users’ computers. The Panel agrees that Respondent attempts to phish for information, and thus registered and uses the domain name 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 can evince 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). Complainant contends that Respondent must have had actual knowledge of the mark based on Respondent’s use of the confusingly similar domain name to fraudulently obtain information. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bitrexx.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 7, 2018
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