Bittrex, Inc. v. pedro sousa lima / ronaldo sousa
Claim Number: FA1803001779924
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is pedro sousa lima / ronaldo sousa (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--birex-leba.com> and <xn--bttrx-esay.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2018; the Forum received payment on March 30, 2018.
On April 2, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--birex-leba.com> and <xn--bttrx-esay.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 April 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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--birex-leba.com, postmaster@xn--bttrx-esay.com. Also on April 11, 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 May 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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
Complainant asserts trademark rights in BITTREX and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark BITTREX in connection with its business providing a cryptocurrency exchange;
2. Complainant holds, inter alia, United Kingdom Intellectual Property Office (“UKIPO”) Reg. No. UK00003231077, registered June 10, 2017, for the trademark BITTREX;
3. the disputed domain name <xn--birex-leba.com> was created on December 2, 2017 and the registrant is listed as pedro sousa lima;
4. the disputed domain name <xn--bttrx-esay.com> was created on December 27, 2017 and the registrant is listed as Ronaldo sousa;
5. the domain name <xn--birex-leba.com> currently resolves to a parking page but previously has been used for a nefarious purpose;
6. the domain name <xn--bttrx-esay.com> is used for a nefarious purpose; and
7. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
Preliminary procedural issue: Multiple respondents
Paragraph 3(c) of 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 alleges that the domain name holders are either aliases for one person or entity, or are effectively controlled by the one person or entity. In support thereof, Complainant argues that the domain names (i) were registered with the one Registrar, (ii) were created within one month of each other, and (iii) share certain characteristic WHOIS information. The Panel finds sufficient evidence that, for the purposes of paragraph 3(c) of the Rules, the disputed domain names were registered by the one entity. Hereinafter, the term “Respondent” is used to refer collectively to the registrants of the disputed domain names.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [i] Since Complainant evidences its registration of the trademark with UKIPO the Panel finds that it has shown trademark rights in the term BITTREX.
The Panel notes that the disputed domain names are Punycode[ii] iterations of Internationalized Domain Names (“IDN”s). Complainant provides evidence that the domain name <xn--birex-leba.com> corresponds with the IDN <biťťrex.com> and the domain name <xn--bttrx-esay.com> corresponds with the IDN <bíttréx.com>.
Complainant argues that the domain names differ from the trademark only by the addition of the gTLD and the non-ASCII accents given to the letters “i”, “t” and “e” of the trademark and petitions the Panel to treat the Punycode iterations of domain names in an identical manner to their IDN counterparts.[iii]
The Panel has recently considered this argument in another case involving Complainant, Bittrex, Inc. v. clayt closiner / Caly Company. / bittrex acc, FA1801001766167 (Forum, Mar. 8 2018), and found that none of the earlier UDRP decisions considered there had directly confronted the question of whether, for the purposes of the Policy, an IDN expressed and registered in its Punycode form which bears no visual or phonetic resemblance to the at-issue trademark should be considered as either “identical” or “confusingly similar” to that trademark. Nonetheless, the Panel takes the view that this undefended administrative proceeding is not the place for that question to be further ventilated and is prepared to follow the current thinking which is to treat the Punycode registered domain name and its IDN expression as what has been sometimes called, “technically equivalent”.
For the purpose of comparison of the domain names with the trademark it is well accepted that the gTLD, “.com” can be disregarded.[iv] The trademark being an invented term with no ordinary meaning, it follows that the assessment of confusing similarity takes the usual path of a comparison of the aural and visual similarities and differences of the compared terms.
There is no evidence accompanying the Complaint as to how the inflected terms “biťťrex” and “bíttréx” would ordinarily be pronounced and so nothing can be said of their aural similarity to the trademark. On the other hand, the visual correspondence is self-evident and on the weight of that alone the Panel finds the disputed domain names to be confusingly similar to the trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to both disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WHOIS information lists “pedro sousa lima” and “ronaldo sousa” as the domain name registrants and so there is no evidence that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names. On the contrary, the evidence is that the Respondent has used both names in furtherance of a phishing scheme, albeit that, at present, one of the names is not currently in use. The Panel finds that Complainant has made a prima facie case.[vi]
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is met and so the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are or have been used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. The domain names are confusingly similar to Complainant’s trademark. The evidence is that Respondent targeted Complainant and its trademark. The phishing schemes exist for commercial gain. The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.[vii]
Having established all three elements required under the ICANN Policy the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <biťťrex.com> and <bíttréx.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 10, 2018
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] “Punycode” is an algorithm that converts a unicode string of characters into an ASCII string.
[iii] As a number of panels have done; see, for example, Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, FA0612000874447 (Forum February 19, 2007)
[iv] See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”).
[vii] See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting therefrom; Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”).
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