Bittrex, Inc. v. li xiaozhou
Claim Number: FA1803001774908
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is li xiaozhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrex.net>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2018; the Forum received payment on March 7, 2018. The Complaint was submitted in English.
On March 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bittrex.net> 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 March 14, 2018, the Forum served the Complaint and all Annexes, including an English language Written Notice of the Complaint, setting a deadline of April 3, 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@bittrex.net. Also on March 14, 2018, the English language 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 an English language Notification of Respondent Default.
On April 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Bittrex, Inc., is a U.S.-based company that operates one of the leading cryptocurrency exchanges in the world in connection to the BITTREX mark. Complainant has rights in the BITTREX mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018). Respondent’s <bittrex.net> domain name is confusingly similar to Complainant’s BITTREX mark as Respondent merely attaches a “.net” generic top level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <bittrex.net> domain name as Respondent is not licensed or authorized to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name. Furthermore, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent’s disputed domain name redirects users to Complainant’s competitors.
Respondent registered and is using the <bittrex.net> domain name in bad faith as Respondent disrupts Complainant’s business and attracts users to the disputed domain name which redirects users to Complainant’s competitors. Additionally, Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time of registration and this constitutes bad faith. Furthermore, Respondent registered the disputed domain name under a privacy service to conceal its identity, which may further demonstrate bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Bittrex, Inc., is a U.S.-based company that operates one of the leading cryptocurrency exchanges in the world in connection to the BITTREX mark. Complainant has rights in the BITTREX mark through its trademark registrations with the USPTO (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018). Complainant also has common law rights in the BITTREX mark per Policy ¶ 4(a)(i) dating back to February 2014. Respondent’s <bittrex.net> domain name is confusingly similar to Complainant’s BITTREX mark.
Respondent, li xiaozhou, registered the <bittrex.net> domain name on May 10, 2017.
Respondent has no rights or legitimate interests in the <bittrex.net> domain name. Respondent’s disputed domain name redirects users to Complainant’s competitors.
Respondent registered and is using the <bittrex.net> 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 under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”).
While Complainant does not specifically argue common law rights in the BITTREX mark, Complainant provides evidence of secondary meaning of the BITTREX mark. Trademark registrations of a mark are not necessary to demonstrate rights in a mark and secondary meaning of a mark is sufficient to show common law rights of a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant claims its earliest use of the BITTREX mark dates back to February of 2014 and has used it continuously since that date. Complainant provides screenshots of its advertising, WHOIS information for its own website, and related evidence of the BITTREX mark being used in commerce since 2014. Therefore, the Panel finds Complainant has sufficiently demonstrated common law rights in the BITTREX mark per Policy ¶ 4(a)(i) dating back to February 2014.
Respondent’s <bittrex.net> domain name is identical to Complainant’s BITTREX mark as Respondent merely appends a gTLD to the mark.
Respondent lacks rights and legitimate interests in the <bittrex.net> domain name. Respondent is not authorized or licensed to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name. In cases where a respondent fails to submit a response, panels have relied on WHOIS information to determine whether respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information lists “li xiaozhou” as the Registrant.
Respondent is not using the <bittrex.net> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent redirects users to Complainant’s competitors. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use).
Respondent attempts to compete with Complainant, which disrupts Complainant’s business, and intentionally attracts users to the <bittrex.net> domain name, which shows bad faith registration and use. Offering competing goods and services at a disputed domain name may indicate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time it registered the <bittrex.net> domain name. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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).
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 <bittrex.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 19, 2018
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