Bittrex, Inc. v. Hung Le
Claim Number: FA1804001782645
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Hung Le (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keobittrex.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2018; the Forum received payment on April 19, 2018.
On April 20, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <keobittrex.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 April 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@keobittrex.com. Also on April 23, 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 17, 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 based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018). Complainant also has common law rights in the mark, dating back to 2014. Respondent’s <keobittrex.com> domain name is confusingly similar to Complainant’s BITTREX mark because it merely adds the term “KEO” and the generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <keobittrex.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 is using the disputed domain name to advertise Respondent’s fraudulent “pump and dump” scam.
Respondent registered and is using the <keobittrex.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s competing website. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent likely profits by using the domain name to perpetuate its fraudulent “pump and dump” scam, which plagues cryptocurrency markets and harms legitimate investors. Further, Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the disputed 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 <keobittrex.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 based upon its registration of the mark with the USPTO (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds that Complainant’s registration of the BITTREX mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant also has common law rights in the BITTREX mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See 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 contends it has spent substantial time, effort and money promoting the BITTREX mark and that it has used the mark consistently since 2014. The Panel finds that Complainant’s uncontested allegations and evidence have established common law rights in its BITTREX mark pursuant to Policy ¶ 4(a)(i). These rights existed before Respondent requested the disputed domain name.
Complainant argues Respondent’s <keobittrex.com> domain name is confusingly similar to the Complainant’s BITTREX mark because it incorporates the mark in its entirety and is differentiated only by the addition of the term “KEO” and the gTLD “.com.” The addition of a generic term and gTLD is not sufficient to distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel finds that the <keobittrex.com> domain name is confusingly similar to the BITTREX mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its BITTREX mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <keobittrex.com> domain name lists “Hung Le” as the registrant. The Panel finds that Respondent is not commonly known by the <keobittrex.com> domain name.
Complainant argues that Respondent’s is not using the <keobittrex.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that the domain name is being used in connection with a scam that lures Internet users into buying cryptocurrency at a fraudulently inflated price. Using a domain name to perpetuate fraud or illegal activity is not considered a bona fide offer or fair use under Policy ¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorised use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides screenshots of Respondent’s website, which indicate that the site explains to users how to download a “Moon Signal” app to participate in Respondent’s ongoing “pump and dump” scam. Complainant contends that as part of the scam, members of the Moon Signal app purchase a selected cryptocurrency to inflate its value (i.e. “pumping” the coin). The members then try to attract new buyers to sell (“dump”) the coins to at the higher “pumped” price. The Panel finds that Respondent uses the domain name to perpetuate a fraudulent scam and fails to use the <keobittrex.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant contends Respondent is using the domain name to perpetuate a fraudulent scam and to disrupt Complainant’s cryptocurrency business. Use of a confusingly similar domain name to disrupt a complainant’s business may be evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (Generally, there is no restriction on what constitutes a disrupting of a Complainant’s business, and using a confusingly similar domain name to disrupt a complainant’s business can evince bad faith registration and use under Policy ¶ 4(b)(iii)). Screenshots of the <keobittrex.com> website indicate that the site provides information about perpetuating a scam involving Complainant’s Bittrex cryptocurrency. The Panel agrees with Complainant that this use disrupts Complainant’s cryptocurrency business and finds that Respondent has registered and used the domain name in bad faith per Policy ¶4(b)(iii).
Complainant argues that Respondent is using the domain name to create confusion with Complainant’s BITTREX mark to attract Internet users for Respondent’s own commercial benefit. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may be considered evidence of bad faith use under Policy ¶4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Complainant alleges that Respondent uses the confusingly similar <keobittrex.com> domain name to direct Internet users to a website that defrauds Complainant’s potential customers for Respondent’s own commercial gain. The Panel finds that Respondent used the domain name to create confusion with Complainant’s mark for commercial gain and that Respondent used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant contends Respondent had actual knowledge of Complainant’s rights in the BITTREX mark before Respondent registered the <keobittrex.com> domain name. Actual knowledge of a complainant’s rights in a mark prior to the registration of a disputed domain name may demonstrate bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks). Complainant asserts that Respondent had knowledge of Complainant’s rights in the mark because the <keobittrex.com> website prominently displays Complainant’s BITTREX mark and logo. The Panel finds that Respondent registered the domain name with actual knowledge of Complainant’s rights in the mark and that Respondent registered and used the domain name in 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 <keobittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 23, 2018
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