iFinex Inc. v. Marco Bander
Claim Number: FA1807001796677
Complainant is iFinex Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn LLP, Washington, USA. Respondent is Marco Bander (“Respondent”), Puerto Rico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <btifniex.com>, registered with Key-Systems GmbH.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2018; the Forum received payment on July 15, 2018.
On July 17, 2018, Key-Systems GmbH; confirmed by e-mail to the Forum that the <btifniex.com> domain name is registered with Key-Systems GmbH; and that Respondent is the current registrant of the name. Key-Systems GmbH; has verified that Respondent is bound by the Key-Systems GmbH; 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 July 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@btifniex.com. Also on July 19, 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 August 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Examples of Complainant’s trademark filings (collectively, the “Filing(s)”) for its BITFINEX, BITFINEX & Leaf Design Logo, and Leaf Design trademarks in Class 36, and BITFINEX INVEST IN THE FUTURE & Leaf Design trademark in Classes 36 and 42 (each a “Mark,” and collectively, the “Marks”) in Hong Kong, the European Union, the Russian Federation, China, India, Canada, and the United States are detailed in an annex. Complainant’s Marks are well-known in the financial services industry, and Complainant’s BITFINEX trading platform is the “world’s largest and most advanced bitcoin trading platform.” Complainant first used its BITFINEX Mark, BITFINEX INVEST IN THE FUTURE, and BITFINEX INVEST IN THE FUTURE & Leaf Design Marks at least as early as 2013, and first used its BITFINEX & Leaf Design Logo and Leaf Design Marks at least as early as 2016. In addition, Complainant first registered its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark on April 15, 2015. Registrant currently owns ten (10) registrations for its Marks in Hong Kong, the European Union, and India, issued in 2015, 2017, and 2018.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
A. Jurisdictional Basis for the Administrative Proceeding
[7.1] This dispute is properly within the scope of the UDRP, and the FORUM has jurisdiction to decide the dispute, because the registration agreement pursuant to which the Domain is registered incorporates the UDRP. Tucows Domains Inc. (“Tucows”) is the controlling domain registration agreement for the Domain, because Tucows appears to be the actual registrar, and Key-Systems GmbH, although listed on the WHOIS as the registrar, appears to be a reseller for the Domain.
[7.2] Further, in accordance with the UDRP, ¶4(a), Respondent is required to submit to a mandatory administrative proceeding because:
UDRP, ¶4(a)(i) The Domain is identical or confusingly similar to a trademark in which Complainant has rights; and
UDRP, ¶4(a)(ii) Respondent has no rights or legitimate interests in the Domain; and UDRP, ¶4(a)(iii) The Domain was registered and is being used in bad faith.
B. Nature of the Dispute
i. Complainant and its Mark
[7.3] Complainant has used Complainant’s BITFINEX Marks since at least as early as 2013 in connection with financial services in Class 36. Complainant’s BITFINEX, BITFINEX INVEST IN THE FUTURE, and BITFINEX INVEST IN THE FUTURE & Leaf Design Marks began use at least as early as October 25, 2013. Complainant’s BITFINEX Logo Mark began use at least as early as June 27, 2016. Presently, Complainant’s Marks are used around the globe, including in Asia (including Hong Kong, India, China, and the Russian Federation), in North America (including in the United States and Canada), and in Europe (including in the European Union) in connection with financial services in Class 36
[7.4] Complainant owns a 2015 Hong Kong trademark registration for its BITFINEX INVEST IN THE FUTURE & Leaf Design Mark, 2017 trademark registrations in the European Union and Hong Kong for its BITFINEX, BITFINEX & Leaf Design, and Leaf Design Marks, and 2018 trademark registrations in India for its BITFINEX, BITFINEX & Leaf Design, and Leaf Design Marks.
[7.5] Complainant’s BITFINEX and BITFINEX Logo Marks have been filed in Asia (including Hong Kong, China, India, and the Russian Federation), in North America (including in the United States and Canada), and in Europe (including in the European Union) in connection with financial services in Class 36.
[7.6] Through Complainant’s extensive use and substantial investments in promoting its Marks over the course of approximately five (5) years, the Marks have developed substantial goodwill and a positive reputation. Complainant’s services are available in dozens of jurisdictions around the globe.
[7.7] Complainant’s bitfinex.com domain (“Complainant’s Domain”) was registered by Complainant’s predecessor in interest on October 11, 2012. Examples of Complainant’s use of its Marks, including current screenshots from Complainant’s bitfinex.com website (“Complainant’s Site”) are provided.
[7.8] In less than four (4) years, Complainant became “the world’s largest and most advanced bitcoin trading platform.” By November 2017, Complainant was the largest BTC-USD trading exchange in the world, capturing up to in excess of fifty percent (50%) of worldwide daily BTC-USD trading volume.
[7.9] Complainant’s Mark is an invented, fanciful trademark, as evidenced by the fact that Complainant is the only party who has filed a trademark containing the letterstring “bitfinex” before the United States Patent and Trademark Office.
ii. Respondent’s Registration and Use of the Domain
[7.10] Respondent registered the Domain on June 23, 2018 (“Domain Registration Date”). Respondent, Marco Bander, is not affiliated with Complainant, or authorized to use Complainant’s intellectual property in any manner.
[7.11] On information and belief, the website associated with the Domain (“Site”) has not been fully developed. The Site currently features a “Site in Progress” notice, with links to “read the mail” or “manage services.” However, the Domain is actively used to host one or more email addresses (collectively, the “Phishing Email Addresses”), used to send infringing phishing e-mails to Complainant’s customers that are designed to solicit information under false pretenses (collectively, the “Phishing Activity”). An example of Respondent’s Phishing Email Addresses and Phishing Activity, as detailed in a June 25, 2018 email sent to one of Complainant’s customers was provided.
Specifically, the Phishing Activity:
· Sends emails from Phishing Email Addresses, such as listing@btifniex.com to recipients, including Complainant’s customers.
· Features Complainant’s BITFINEX Mark in the subject line, such as “Bitfinex – Exchange Trading Platform.”
· Uses Complainant’s Domain and Complainant’s prominent marketing statement (“The world’s largest and most advanced cryptocurrency trading platform,”) to lure recipients into believing the Phishing Activity emanates from Complainant by starting the email: “The world’s largest and most advanced cryptocurrency trading exchange – Bitfinex.com would like to invite your project to be a part of our great platform.”
· Invites recipients to “fill out the application form” for a coin/token listing slot opportunity that appears to be directly related to Complainant’s Site and business, which is a “full-featured spot trading platform for major digital assets & cryptocurrencies” that has “a suite of order types to help traders take advantage of every situation.”
· Provides a hyperlink for recipients to use, in order to provide the information being phished for through the Phishing Activity.
· Uses Complainant’s BITFINEX, BITFINEX & Leaf Design Logo, and Leaf Design Marks prominently in the .sig for Phishing Activity. This use of Complainant’s Marks appears to be intentionally designed to trick Complainant’s unsuspecting customers into trusting the Phishing Activity.
[Graphic removed]
[7.12] On information and belief, this Phishing Activity is a ruse to steal digital currency from Complainant’s unsuspecting customers. Respondent’s Phishing Activity uses Complainant’s well-known and trusted Marks in order to trick recipients into believing the Phishing Activity stems from Complainant’s legitimate and trusted business. The fact that the Phishing Activity is an invitation to a platform that is directly competitive to Complainant’s Site and business, paired with the use of Complainant’s well known Marks, creates a serious risk that Complainant’s customers and other recipients of the Phishing Activity will be taken advantage of by Respondent.
C. Legal Grounds Proving Domain Violates the UDRP
[7.13] The Domain should be transferred to Complainant pursuant to the UDRP because (1) Complainant has rights in its Mark, and the Domain is confusingly similar to Complainant’s Mark, (2) Respondent has no rights or legitimate interests in the Domain, and (3) Respondent registered and is using the Domain in bad faith.
i. The Domain is Confusingly Similar to Complainant’s Mark
[7.14] As demonstrated above, Complainant owns enforceable rights in the invented, fanciful, well known BITFINEX Mark.
[7.15] Complainant’s rights in its Mark pre-date the registration date of the Domain. Complainant’s rights in its Marks, which date back at least as early as 2013. Respondent registered the Domain on June 23, 2018, failed to develop a Site at the Domain, but immediately commenced use of Phishing Email Addresses related to the Domain in order to promote Phishing Activity emails that use Complainant’s Marks, marketing statements, and business platform to trick recipients into filling out an application for Respondent’s falsely advertised services.
[7.16] The Domain is confusingly similar to Complainant's BITFINEX Mark. See, e.g. Amazon Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, D2006-0517 (WIPO June 28, 2006) (finding the qmqzon.com and amazoh.com domains to be “confusingly similar” to the complainant’s AMAZON mark). Moreover, the domain reflects a form of cybersquatting commonly referred to as “typosquatting.” Typosquatting implicates the willful registration and use of a domain that is a predictable mistyping or common misspelling of a distinctive mark. See, Wachovia Corporation v. American Consumers First, D2004-0150 (WIPO June 10, 2004); Red Bull GmbH v. Grey Design, D2001-1035 (WIPO Oct. 24, 2001); Playboy Enterprises International Inc. v. SAND WebNames – For Sale, D2001-0094 (WIPO Apr. 3, 2001); Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., D2000-1293 (WIPO Nov. 21, 2000).
Here, there is no question that Respondent’s Domain is confusingly similar to Complainant’s BITFINEX Mark because the Domain only moves the letter “I”s position within Complainant’s BITFINEX Mark: “I” appears after “T” and after “N” instead of before “T” and before “N,” as used in Complainant’s Mark. Therefore, Respondent’s Domain is confusingly similar to Complainant’s BITFINEX Mark, and Complainant’s Site, as detailed below.
|
Complainant’s Mark |
Respondent’s Second-Level Domain |
|
BITFINEX |
BTIFNIEX |
|
Complainant’s Site |
Respondent’s Domain |
|
Bitfinex.com |
Btifniex.com |
This case is similar to the Verizon Trademark Services, LLC v. paulo c/o paulo kann, D2010-0989 (WIPO Aug. 9, 2010) case. In Verizon, the complainant’s VERIZON brand was used by the respondent to register a number of domains, including veirzon.net (where the letter “I” was changed to be before the letter “R” instead of after the letter “R,” as it appeared in the complainant’s brand). The Panel held that the respondent “used a range of derivations of the Complainant’s marks to ‘capture’ Internet users looking for the Complainant’s sites” and that such derivations were “confusingly similar” to the complainant’s VERIZON brand. In the present case, Respondent would not have chosen this confusingly similar Domain if not for the fact that doing so would create confusion with Complainant’s Mark and services. Respondent’s intent to confuse consumers is further evidenced by the fact that the Domain is solely used to form the basis of Phishing Email Addresses that send Phishing Activity via email to recipients, using Complainant’s Mark in the subject line, Complainant’s marketing slogan in the opening line, Complainant’s business platform as the subject matter of the alleged application process, and Complainant’s trademark and copyright-protected logo Marks in the .sig for the Phishing Activity emails.
As demonstrated by the UDRP cases above, Respondent’s Domain is confusingly similar to Complainant’s BITFINEX Mark because the Domain features Complainant’s invented and fanciful BITFINEX Mark - with a slight rearrangement of the letter “I” within the Mark - to form the <Btifniex.com> Domain. Because the essence of Respondent’s Domain remains Complainant’s distinctive, invented, and fanciful Mark – BITFINEX – the Domain is confusingly similar to Complainant’s BITFINEX Mark.
In light of the above, it is clear that Complainant has prior rights in its BITFINEX Mark, and the Domain is confusingly similar to Complainant’s BITFINEX Mark in violation of UDRP,
¶4(a)(i).
ii. Respondent Has No Rights or Legitimate Interests in the Domain
[7.17] Respondent has no rights or legitimate interests in the Domain.
a. Complainant’s rights in its BITFINEX Mark pre-date Respondent’s registration of the Domain by nearly five (5) years. Complainant’s earliest rights in its Marks, which date back at least as early as October 25, 2013. Respondent registered the Domain on June 23, 2018. Complainant’s prior rights in its BITFINEX Mark highlight the Respondent’s lack of rights or legitimate interests in the Domain. See, e.g., Pierre Fabre Dermo-Cosmetique v. Simon Chen/personal/jinpingguo, D2011-0769 (WIPO Jul. 15, 2011) (a prima facie case that respondents lacked rights or legitimate interests in the disputed domain names was established in large part by the complainant’s earlier trademark rights).
b. Respondent is not affiliated with Complainant and has not been authorized by Complainant to use its Marks in any manner. Respondent’s use of Complainant’s Marks in the context of the typosquatting Domain, and in the context of the targeted Phishing Activity, are not authorized by Complainant as the trademark owner.
c. Respondent has never used the Domain in connection with a bona fide offering of goods or services, and has never used the Domain in a legitimate, noncommercial, or fair use manner without intent for commercial gain. Upon registering the Domain, Respondent immediately used it to (a) set up a dummy Site, (b) create Phishing Email Addresses, and (c) send Phishing Activity emails to Complainant’s customers, that intentionally infringe Complainant’s Marks, and imitate Complainant’s business in order to trick unsuspecting recipients into providing sensitive information through the promoted “application” form. “[T]he use of a domain name for the illegal activity of phishing can never confer rights or legitimate interests on a respondent.” Educational Testing Service v. Ali Mohammed Ahmed, Afakcenter, D2017-1600 (WIPO Oct. 5, 2017). Accordingly, Respondent has never used the Domain in connection with a bona fide offering of goods or services, nor in a legitimate, noncommercial manner.
d. Likewise, use of a domain to send phishing emails expressly does not create rights or a legitimate interest in the domain at issue. See, e.g., L’Oréal v. Domains by Proxy, LLC, Registration Private, DomainsByProxy.com / Robert Bowman, D2017-1387 (Sept. 14, 2017) (in transferring the <loreal-global.com> domain, the panel held that sending phishing emails “demonstrate[d] that the [r]espondent was undoubtedly aware of the [c]omplainant’s [brand] and the [domain] was not being used in connection with a bona fide offering of goods or services or for any genuine noncommercial purpose”). Accordingly, Respondent has never used the Domain in connection with a bona fide offering of goods or services, nor in a legitimate, noncommercial manner.
e. On information and belief, Respondent does not own any trademark registrations for the Domain. The Little Gym International, Inc. v. Domainstuff.com, D2003-0466 (WIPO Aug. 21, 2003).
f. On information and belief, the Respondent is not commonly known by “Bitfinex” or “Btifniex” or “Btifniex.com.” See, e.g., Beronata Services Ltd v. Private Registration, Account Privacy / Suren Akopian, D2017-1796 (WIPO Nov. 9, 2017) (“[t]here is no evidence that the [r]espondent has been commonly known by the [d]isputed [d]omain [n]ame or the [t]rade mark…[a]s such…the [c]omplainant succeeds on the second element of the Policy”).
Thus, Respondent has no rights or legitimate interests in the Domain in violation of UDRP, ¶4(a)(ii).
iii. Respondent Registered and is Using the Domain in Bad Faith
[7.18] The evidence clearly demonstrates that Respondent registered, and is using, the Domain in bad faith.
a. First, Respondent registered the Domain nearly five (5) years after Complainant developed rights in its fanciful and invented BITFINEX Mark, and over three (3) years after Complainant first registered one of its BITFINEX Marks for its services. Respondent was therefore on constructive notice of Complainant’s rights in its Mark. See, e.g., The Fragrance Foundation Inc. v. Texas International Property Associates, D2008-0982 (WIPO Aug. 28, 2008) (“[h]ad [r]espondent conducted the most cursory of searches on the Internet or with the readily available… registration database…it would have encountered [c]omplainant’s trademarks. The [p]anel finds, therefore, that either [r]espondent is disingenuous in its representation that it was unaware of [c]omplainant, or…by failing to conduct the most minor diligence, [r]espondent made the disputed domain name registration in bad faith”).
b. Second, Respondent’s use of the Domain to create Phishing Email Addresses, and send Phishing Activity emails, that appear directly targeted to trick Complainant’s customers into providing sensitive information in an “application” form, for a purpose that appears to be directly within Complainant’s business, using Complainant’s Marks including trademark and copyright-protected logos, clearly demonstrates bad faith. See, e.g., L’Oréal v. Domains by Proxy, LLC, Registration Private, DomainsByProxy.com / Robert Bowman, D2017-1387 (Sept. 14, 2017) (“use of a domain name to send fraudulent, false and misleading emails is clear bad faith use”); LegalZoom.com, Inc. v. DomainAdmin, Whois Privacy Corp. / Maddisyn Fernandes, D2017-1894 (WIPO Nov. 14, 2017) (the Panel held that evidence of bad faith included the fact that “at the time the [r]espondent registered the disputed domain name it must have had the [c]omplainant’s trademarks in mind as they had already been registered for many years” and the complainant’s trademark was an “invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the [c]omplainant”). Respondent chose a domain that is confusingly similar to Complainant’s invented BITFINEX Mark, then used the Domain to send Phishing Activity emails designed to trick Complainant’s customers, and ostensibly steal Complainant’s customers and/or steal from Complainant’s customers. Accordingly, Respondent registered and is using the Domain in bad faith.
c. Third, it can be inferred that Respondent knew about Complainant, its Marks, and its services when the Domain was registered, given that Respondent quickly began using the Domain to establish the Phishing Email Addresses for the purpose of sending Phishing Activity emails to Complainant’s customers, using Complainant’s Marks, and targeting Complainant’s area of business. See, e.g., Caesars World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“The fact that the [d]omain [n]ame is linked to websites that expressly refer to casino, gaming and poker services further indicates that [r]espondent knew the scope of [c]omplainant’s services and products which are commercialized under its CAESARS family of marks”). Like Caesars, it is simply untenable that Respondent was unaware of Complainant, its Marks, and its services given that its Domain’s entire purpose is to provide a platform for Phishing Email Addresses so that Respondent can pretend to be Complainant for the purpose of stealing Complainant’s customers and/or stealing from Complainant’s customers.
d. Fourth, Respondent registered the Domain primarily for the purpose of disrupting Complainant’s business and with the intent of commercially benefiting from such use. See, e.g., Microsoft Corporation v. N/A, FA1103001380357 (Nat. Arb. Forum Apr. 22, 2011) (bad faith demonstrated by evidence the respondent's domain name was used to divert Internet users to the complainant's detriment); The Channel Tunnel Group Ltd. v. John Powell, D2000-0038 (WIPO Mar. 17, 2000) (awareness of complainant's mark at the time of registering confusingly similar domain name is evidence of bad faith); Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, D2000-0209 (WIPO June 5, 2000) (finding bad faith where a domain name owner sought to create “initial confusion on the part of Internet users with regard to the source of the domain name”) (internal quotations omitted); Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (“respondent’s current use of the Domain Name is aimed at creating traffic to his web site . . . . respondent is thereby taking a free ride on the goodwill of complainant’s [mark].”). Here, there can be no doubt that the Domain was carefully chosen to trick recipients of the Phishing Activity emails into believing they were contacted by complainant. By doing so, Respondent intentionally diverted Internet traffic away from Complainant's Site, all with the intent of commercial gain in violation of the UDRP.
e. Fifth, Respondent's bad faith registration and use can be inferred by Respondent's failure to show rights or legitimate interests in the Domains. See Complaint 7.17, as well as Imerys v. Unknown (gfg fdgdf, dfgdfg), D2007-0045 (WIPO Mar. 28, 2007).
f. Sixth, Respondent's bad faith registration and use can also be inferred by Respondent's constructive notice of Complainant's rights in its BITFINEX Marks, some of which were in use for nearly five (5) years and ten (10) of which achieved trademark registration before the Domain (a typosquatting version of Complainant’s invented BITFINEX Mark) was registered. See RRI Financial, Inc. v. Chen, D2001- 1242 (WIPO Dec. 11, 2001).
g. Finally, Respondent registered and is using the Domain in bad faith because Respondent is in violation of Section 2 of the UDRP, incorporated by reference in Respondent's registration agreement. By agreeing to be bound by Section 2, Respondent represented and warranted that its registration and use of the Domain would not infringe on another's rights. Violating these representations shows a registrant's bad faith. See, e.g., Young Genius Software AB v. MWD, D2000-0591 (WIPO Aug. 7, 2000). Respondent's actions clearly infringe Complainant's rights. Thus, Respondent's violations of the UDRP and its registration agreement with the concerned registrar only further buttress the conclusion that Respondent has acted, and continues to act, in bad faith.
Thus, Respondent registered and is using the Domain in bad faith in violation of UDRP, ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 BITFINEX mark based upon its registrations with multiple agencies, including with the Hong Kong Trade Mark Registry (e.g., Reg. No. 304,279,690, registered Sept. 20, 2017). Registration of a mark with a governmental authority, such as the Hong Kong Trade Mark Registry, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provided copies of its trademark registrations for the BITFINEX mark and a table of these registrations. Complainant has demonstrated its rights in BITFINEX mark under Policy ¶4(a)(i).
Complainant claims the <btifniex.com> domain name is confusingly similar to the BITFINEX mark because it contains the mark in its entirety, merely transposing the letter “i” for the letter “t” and also the letter “i” for the letter “n.” Misspelling of a complainant’s mark does not prevent a finding of confusing similarity between the mark and disputed domain name under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Removing a space is also disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.); 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). The Panel finds the <btifniex.com> is confusingly similar to the BITFINEX mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in <btifniex.com> domain name. Respondent is not licensed or authorized to use the BITFINEX mark and is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. 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). Respondent was not authorized to use Complainant’s marks and there is no evidence in the record to suggest Respondent was ever authorized to use the BITFINEX mark. 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 domain name was originally registered under a WHOIS privacy service. This was lifted once this Proceeding was brought. The WHOIS information of record currently identifies Respondent as “Marco Bander”. There is no obvious relationship between this name and the domain name. The Panel must conclude Respondent is not commonly known by the disputed domain name per Policy ¶4(c)(ii).
Complainant claims Respondent is not using the <btifniex.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) & (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). A domain name can be used for many purposes, including:
· Hosting a web site (which is the most common use and no longer being done in this case).
· Hosting an email server (which is being done in this case, but for fraudulent purpose of Respondent passing itself off as Complainant…so it doesn’t constitute a bona fide purpose).
· Acting as a backend for an ecommerce site.
· Acting as a name server.
· Acting as a storage area for files (which may not be connected to a website).
In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” This disputed domain name fails to resolve to a website. Respondent does not claim the domain name is used for other bona fide purposes. Respondent’s use of the domain name does not constitute a bona fide offering or good or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii).
Respondent attempts to impersonate Complainant as part of a fraudulent email scheme. Using a domain name to pass off as a complainant to conduct a fraudulent scheme does not create rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”). Respondent uses an email address associated with the disputed domain name to impersonate Complainant and sends phishing e-mails to Complainant’s customers designed to solicit information under false pretenses. Respondent’s use of the domain name indicates it lacks any rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).
Respondent registered the domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. Respondent could not acquire any rights to the domain name in a commercial context under such circumstances.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <btifniex.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and commercially benefit from the disputed domain name by impersonating Complainant. While there was a website, Respondent asked visitors to complete an application to use Complainant’s website (and used Complainant’s logo in the process). The Panel assumes Respondent was not collecting such applications in Complainant’s name for the eleemosynary purpose of turning over the information to Complainant. Using a domain name to impersonate a complainant to carry out a fraudulent scheme constitutes bad faith pursuant to Policy ¶4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶4(b)(iii), and/or Policy ¶4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s customers designed to solicit information under false pretenses. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent now fails to make an active use and is passively holding the domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Respondent does not claim to use the domain for any bona fide purpose (and sending out emails does not constitute a bona fide purpose). Respondent’s inactive use of the disputed domain name constitutes bad faith registration and use under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s BITFINEX mark. This seems to be true because Respondent’s original website used Complainant’s logo and Respondent impersonates Complainant. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Respondent solicits applications in Complainant’s name. Respondent had actual knowledge of Complainant’s rights in the BITFINEX mark and this constitutes bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <btifniex.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, August 16, 2018
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