Bittrex, Inc. v. Malik Ozbek
Claim Number: FA1808001801389
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Malik Ozbek (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2018; the Forum received payment on August 14, 2018.
On August 16, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@biffrex.com, postmaster@bittrexn.com, postmaster@bittrexus.com, postmaster@bittrexde.com, and postmaster@bittrexca.com. Also on August 17, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names are confusingly similar to Complainant’s BITTREX mark.
2. Respondent does not have any rights or legitimate interests in the <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names.
3. Respondent registered and uses the <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bittrex, Inc., is a U.S.-based company that uses the BITTREX mark to operate a cryptocurrency exchange. Complainant has registered the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,380,786, registered Jan. 16, 2018).
Respondent registered the disputed domain names on the following dates: <biffrex.com> (August 6, 2018), <bittrexn.com> (August 3, 2018), <bittrexus.com> (July 19, 2018), <bittrexde.com> (July 25, 2018), and <bittrexca.com> (July 27, 2018), and uses them for a fraudulent phishing scheme to obtain customer information by impersonating Complainant.
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.”).
The Panel finds that Complainant has established rights in the BITTREX mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (Reg. No. 5,380,786, registered Jan. 16, 2018). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“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. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names incorporate Complainant’s mark, with a slight misspelling or a generic term, and the “.com” gTLD. Such changes fail to sufficiently distinguish a domain name from a mark for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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 Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also 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 therefore finds that Respondent’s <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names are confusingly similar to Complainant’s BITTREX mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names, and is not commonly known by the domain names. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, and has no permission to use the BITTREX mark. The WHOIS identifies “Malik Ozbek” as the registrant for the disputed domain names. The Panel therefore finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant also argues that Respondent uses the <biffrex.com>, <bittrexn.com>, and <bittrexus.com> domain names as part of a fraudulent phishing scheme to obtain customer information by impersonating Complainant. Passing off in furtherance of a phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of the webpages resolving from the disputed domain names containing Complainant’s BITTREX mark and a login box identical to Complainant’s. The Panel agrees that Respondent attempts to pass off as Complainant to acquire personal information from Internet users, failing to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant argues that Respondent uses the <bittrexde.com> and <bittrexca.com> domain names in connection with phishing, and the installation of malware. Using a domain name to install malware onto a user’s computer or in furtherance of a phishing scheme is evidence of a lack of rights or legitimate interests in a domain name. See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant provides screenshots of the Respondent’s website which contains a questionnaire for users to enter in non-personal information, and an installation request for Adobe Flash Player, which installs malware on a user’s computer. Phishing schemes and downloading malicious software can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use.). Complainant provides screenshots of the warning page that confronts users when they attempt to access the disputed domain names, which indicate that users are about to enter a deceptive webpage. The Panel finds that Respondent uses the domain name in connection with malware, in addition to phishing for personal information from users, further evidence that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and uses the <biffrex.com>, <bittrexn.com>, and <bittrexus.com> domain names to redirect Internet users to websites that mimic Complainant’s website in order to confuse users into believing that Respondent is Complainant, or is affiliated with Complainant. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). Accordingly, the Panel agrees that Respondent uses the disputed domain names above to commercially benefit off Complainant’s mark, in bad faith under Policy ¶ 4(b)(iv).
Complainant shows that Respondent uses the <bittrexde.com> and <bittrexca.com> domain names in connection with phishing and the installation of malware. The Panel thus finds that Respondent uses the <bittrexde.com> and <bittrexca.com> domain names in bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”).
Complainant contends that Respondent must have had actual knowledge of the mark based on Respondent’s use of the distinct BITTREX mark in its domain names and on the resolving webpages for the <biffrex.com>, <bittrexn.com>, and <bittrexus.com> domain names. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s BITTREX mark when it registered the disputed domain names, demonstrating further bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <biffrex.com>, <bittrexn.com>, <bittrexus.com>, <bittrexde.com>, and <bittrexca.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 11, 2018
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