Bittrex, Inc. v. Domain Administrator / Eastern Valley Limited / Satish Kumar / Maritn Disoja
Claim Number: FA1802001771090
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Domain Administrator / Eastern Valley Limited / Satish Kumar / Maritn Disoja (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2018; the Forum received payment on February 8, 2018.
On February 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@bittrexpower.com, postmaster@bittrexpower.info, and postmaster@bittxcoin.com. Also on February 12, 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 March 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names are confusingly similar to Complainant’s BITTREX mark.
2. Respondent does not have any rights or legitimate interests in the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names.
3. Respondent registered and uses the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bittrex, Inc., is a U.S.-based company that uses the BITTREX mark to operate a leading cryptocurrency exchange. Complainant has rights in the BITTREX mark through its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00003231077, registered Oct. 6, 2017, effective date May 15, 2017) and the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 016727109, registered Oct. 13, 2017, filed May 15, 2017). Complainant also has common law rights in the BITTREX mark dating back to February 2014.
Respondent registered the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names on November 12, 2016, June 10, 2017, and September 16, 2017, respectively. Respondent uses the <bittrexpower.com> domain name to host a parked webpage displaying competing click-through links. The <bittrexpower.info> domain name resolves to a webpage hosting a competing blog that discusses the virtues of trading, and the <bittxcoin.com> domain name installs malware onto the users’ computer.
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.”).
Preliminary Issue: Multiple Respondents
Complainant alleges that the entities that control the disputed domain names are effectively the same person and/or entity, 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.” Complainant contends that all of the domain names are under common ownership as all three domain names were registered with the same Registrar, two of the domain names contain identical terms with the exception of a generic top-level domain (“gTLD”) and both formerly resolved to the same webpage, and the <bittrexpower.com> domain name previously redirected Internet users to the landing page for the <bittxcoin.com> domain name.
The Panel finds that Complainant has sufficiently demonstrated that the disputed domain names are jointly controlled, and will refer to the registrants collectively as “Respondent.”
Complainant claims rights in the BITTREX mark due to its registration of the mark with the UKIPO and the EUIPO. Registration of a mark with a trademark agency, such as the UKIPO or EUIPO, is sufficient to establish 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 registered mark extend back to the application filing date of the mark, in this case May 2017. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). Accordingly, the Panel finds Complainant has established sufficient rights to the BITTREX mark for purposes of Policy ¶ 4(a)(i).
Complainant also claims to hold common law rights in the BITTREX mark dating back to its first use in commerce in February 2014. Complainant alleges to have used the mark continuously since then and provides evidence that it has spent substantial time, effort, and money promoting the mark in the United States and worldwide. Thus, the Panel finds that Complainant has common law rights in the BITTREX mark dating back to 2014. 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.”).
Respondent’s <bittrexpower.com> and <bittrexpower.info> domain names use Complainant’s BITTREX mark and simply add a generic term. The <bittxcoin.com> domain name misspells the BITTREX mark by removing the letters “r” and “e.” The disputed domain names also add a gTLD. None of these changes to Complainant’s BITTREX mark sufficiently distinguish the disputed domain names for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BITTREX mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.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 identifies “Domain Administrator / Eastern Valley Limited” as the registrant for the <bittrexpower.com> domain name; “Satish Kumar” as the registrant for the <bittrexpower.info> domain name; and “Martin Disoja” as the registrant for the <bittxcoin.com> domain name. Complainant asserts that there is no evidence demonstrating that Respondent is commonly known by the BITTREX mark. Complainant has not given Respondent permission to use the mark in any manner. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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 also argues that Respondent uses the <bittrexpower.com> domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage associated with the domain name, which displays links such as “Trade Bitcoin,” “Trade Platform,” and “Bit Coin Trading.” The Panel finds that Respondent uses the <bittrexpower.com> domain name to display competing hyperlinks, failing to confer rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that the <bittrexpower.info> domain name resolves to a webpage hosting a blog that discusses the virtues of trading and functions of a competitor. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage that contains information relating to trading cryptocurrency. The Panel finds that Respondent uses the <bittrexpower.info> domain name to promote competing services, failing to use the domain name in connection with 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).
Finally, Complainant avers that the <bittxcoin.com> domain name purports to have installed malware onto the users’ computer. Using a domain name in connection with malware fails to confer rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) & (iii). Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the resolving webpage, which displays a message in a foreign language with a translation that reads “But we are pirates, and pirates have the black stations with the green colors! You have already been exposed to the hack! Cyber warriors.” Accordingly, the Panel finds that Respondent fails to use the <bittxcoin.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and uses the <bittrexpower.com> and <bittrexpower.info> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain names for its own commercial gain by offering competing advertisements. The Panel agrees that Respondent attempts to commercially benefit from using Complainant’s mark in bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
The Panel finds that the page resolving from the <bittxcoin.com> domain name purports to have installed malware onto the users’ computer, clearly bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”).
Complainant contends that Respondent must have had actual knowledge of the mark based on Respondent’s use of the distinct BITTREX mark in its domain names. The Panel agrees, noting Respondent’s direct competition with Complainant, and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bittrexpower.com>, <bittrexpower.info>, and <bittxcoin.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 12, 2018
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