Bittrex, Inc. v. Abhishake Agarwal
Claim Number: FA1806001791035
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Abhishake Agarwal (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrex-autobot.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 June 11, 2018; the Forum received payment on June 11, 2018.
On June 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bittrex-autobot.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 June 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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-autobot.com. Also on June 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 July 5, 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 that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark and has rights therein based upon its registration of the mark with multiple registries including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018). Respondent’s <bittrex-autobot.com> domain name is confusingly similar to Complainant’s BITTREX mark because Respondent wholly incorporates Complainant’s mark in the disputed domain name and adds a hyphen, a descriptive term, and a generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bittrex-autobot.com> domain name because Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the BITTREX mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to sell a trading bot that competes directly with the goods and services offered by Complainant.
Respondent registered and uses the <bittrex-autobot.com> domain name in bad faith because it disrupts Complainant’s business by redirecting internet users to Respondent’s webpage which offers an exchange bot for sale. In addition, Respondent attempts to trade upon the goodwill associated with Complainant’s BITTREX mark for commercial gain. Further, Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration and subsequent use of 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 <bittrex-autobot.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 asserts rights in the BITTREX mark based upon registration with the EUIPO (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the USPTO (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018, filed Feb. 13, 2017). Registration of a mark with two trademark organizations is sufficient to establish rights in said 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). The Panel finds Complainant has rights in the BITTREX mark per Policy ¶4(a)(i).
Complainant argues that Respondent’s <bittrex-autobot.com> domain name is confusingly similar to Complainant’s BITTREX mark because Respondent incorporates a hyphen, a descriptive term and a gTLD to the mark. Additions of a descriptive term, hyphen, or a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent merely adds the term “autobot” with a hyphen and a “.com” gTLD to Complainant’s BITTREX mark. The Panel finds from Complainant’s uncontested allegations and evidence that the <bittrex-autobot.com> domain name is confusingly similar to Complainant’s 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 argues that Respondent has no rights or legitimate interests in the <bittrex-autobot.com> domain name. Specifically, Complainant contends Respondent is not authorized to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed domain name. 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). The WHOIS information of record identifies Respondent as “Abhishake Agarwal” and there is no other evidence in the record to suggest Respondent is authorized to use Complainant’s BITTREX mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by <bittrex-autobot.com> domain name and that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent is using the <bittrex-autobot.com> domain name to redirect users to Respondent’s website which offers a service that is in direct competition with Complainant’s business. Use of a domain name to redirect users to a website that trades off a complainant’s goodwill or reputation or to sell products or services that compete directly with a complainant’s business is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Anton Strigin, FA1804001782846 (Forum May 24, 2018) (finding use of BITTREXBOT.COM domain to offer a trading bot intended for use with complainant’s Bittrex service was “neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also The Toro Company v. nate mullen, FA1803001776342 (Forum Apr. 20, 2018) (finding that, after the complainant submitted screenshot evidence that the disputed domain name redirected to another website to attract Internet users for respondent’s commercial gain, that the respondent’s use of the disputed domain was not in accordance with Policy ¶¶ 4(c)(i) and (iii)). Here, Complainant asserts that Respondent is using the <bittrex-autobot.com> domain name to trade off the goodwill of Complainant’s BITTREX mark in order to sell Respondent’s cryptocurrency trading bot in competition with the business of Complainant. The Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <bittrex-autobot.com> domain name in bad faith because Respondent is using the disputed domain name to offer services that compete directly with Complainant’s business. Using a confusingly similar domain name to offer competing services is evidence of bad faith per Policy ¶ 4(b)(iii). See Bittrex, Inc. v. Anton Strigin, FA1804001782846 (Forum May 24, 2018) (finding respondent’s use of the domain <bittrexbot.com> in connection with its sale of a cryptocurrency trading bot which disrupted complainant’s business was evidence of bad faith registration and use under Policy ¶ 4(b)(iii)). Here, Complainant argues that Respondent’s website where Respondent offers a cryptocurrency trading bot service is in direct competition with the business of Complainant. The Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered and uses the disputed domain name to trade upon the goodwill of Complainant’s BITTREX mark for Respondent’s own commercial gain by redirecting visitors to Respondent’s website. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s good will and attract Internet users to respondent’s website). Here, Complainant asserts that Respondent is using the disputed domain name to trade upon the goodwill of Complainant’s BITTREX mark by using a confusingly similar domain name to offer a cryptocurrency trading bot. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <bittrex-autobot.com> domain name with actual knowledge of Complainant’s rights in the BITTREX mark. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); 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). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <bittrex-autobot.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name that features Complainant’s mark and offers competing services. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s rights when it registered the <bittrex-autobot.com> domain, which demonstrates bad faith registration and use per 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 <bittrex-autobot.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 16, 2018
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