Bittrex, Inc. v. Priv FB
Claim Number: FA1810001810409
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Priv FB (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittrex.us>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2018; the Forum received payment on October 4, 2018.
On October 5, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <bittrex.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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.us. Also on October 9, 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 November 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 world’s leading cryptocurrency exchanges under the trademark BITTREX. Complainant asserts rights in the BITTREX mark based upon its registration of the mark with the United States Patent and Trademark Office, the European Intellectual Property Office, and other government trademark offices. Respondent’s disputed <bittrex.us> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the name plus the “.us” county code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <bittrex.us> domain name because Respondent is not commonly known by the name and is not authorized by Complainant to use the mark in any way. Furthermore, 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 attempts to divert traffic away from Complainant’s business by redirecting Internet users to a twitter feed or a webpage that features products and services that compete with Complainant’s business in the cryptocurrency field. Additionally, Respondent attempts to phish for Internet users personal and/or financial information.
Respondent registered and uses the <bittrex.us> domain name in bad faith because Respondent attempts to disrupt Complainant’s business by redirecting Internet users to a twitter page or a webpage that promotes competing goods and services in the cryptocurrency field. Furthermore, Respondent attempts to phish for internet users personal and/or financial information. Additionally, Respondent is a serial bad-faith domain registrant who has engaged in a pattern of bad faith registration. Finally, Respondent offers to sell the disputed domain name for US$499. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
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 or 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 trademark based upon its registration of the mark with the USPTO, the European Intellectual Property Office, and various other trademark offices. Registration of a mark with such national government trademark offices is sufficient to establish Complainant’s rights in the mark per the threshold nature of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of some of its registrations of the BITTREX mark. Therefore, in conducting a Policy ¶ 4(a)(i) analysis the Panel finds that Complainant has rights in the BITTREX trademark.
Next, Complainant asserts that Respondent’s <bittrex.us> domain name is confusingly similar to the BITTREX trademark because Respondent includes the entire mark in the disputed domain name plus a ccTLD. The addition of a ccTLD to a mark may not be sufficient to distinguish it from a disputed domain name per Policy ¶ 4(a)(i). See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Here, Respondent includes the entire BITTREX mark in the disputed domain name plus the “.us” ccTLD. Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
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). Should it success in this effort, the burden then shifts to Respondent to show that 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 asserts that Respondent lacks rights and legitimate interests in the <bittrex.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark. Where a response is lacking, relevant WHOIS information may be used to identity a respondent. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its’ mark may be further evidence that respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides a copy of the WHOIS record which identifies the registrant of the disputed domain name as “Priv FB” and further evidence indicates that Respondent’s name may be “Taha Tawfik”. No information of record in this case indicates that Respondent is known otherwise. Consequently, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent fails to use the <bittrex.us> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent diverts user traffic away from Complainant’s business and redirects it to links that are directed at competing webpages. Use of a domain name to divert traffic to a competing webpage may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”) Complainant provides screenshots of the webpages originally associated with the disputed domain name, which show Internet users were initially redirected to a twitter page that promoted cryptocurrency trading platforms. Furthermore, current screenshots of Respondent’s disputed domain name show a webpage that contains click-thru advertisements relating to competing cryptocurrency services. Therefore, under a Policy ¶¶ 4(c)(i) or (iii) analysis, the Panel finds sufficient evidence that Respondent uses the disputed domain name to divert Internet users to webpages of competitors in the cryptocurrency field.
Finally, Complainant contends that Respondent uses the disputed domain name to phish for Internet users’ personal and/or financial information. In support of this assertion, Complainant submits into evidence Respondent’s Iris score of 92 out of 100. Iris is a threat intelligence and investigation platform which assigns a risk score that the disputed domain name is used in phishing based upon various properties of the domain such as how closely related a domain is to other known bad domains, and the results of a machine learning analysis that models how likely it is that a domain name was created for malware, phishing, or spam purposes. The Panel notes that this is a risk assessment that assigns a probability of phishing activity based on peripheral factors. There is, however, no direct evidence of phishing by Respondent in the present record (i.e., examples of actual phishing emails, an image of a fake login page on the domain’s website, etc.). As the Panel has already concluded, based upon the actual uses to which the disputed domain name has been put, that Respondent has not made a bona fide offering of goods or services or a legitimate or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii), it is not necessary to conclude whether Complainant’s evidence supports an additional finding that the Respondent has attempted to phish for Internet users’ personal information.
Complainant contends that Respondent had actual knowledge of Complainant’s rights in its trademark prior to registration of the disputed domain name. A respondent may have actual knowledge of a complainant’s marks where the mark is well-known at the time of registration and where the use of the domain name relates to the complainant’s business. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that the Respondent’s use of the disputed domain name to divert Internet users to a twitter feed and to a website containing click through advertising relating to other cryptocurrency businesses is sufficient to establish that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. Based upon the evidence presented, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the BITTREX trademark prior to registration of the <bittrex.us> domain name under Policy ¶ 4(a)(iii).
Complainant next contends that Respondent registered and uses the <bittrex.us> domain name in bad faith because Respondent is offering to sell the name. Registration and use of a domain name that is confusingly similar to a complainant’s trademark with the intention of selling it may be evidence of bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant provides the WHOIS information for the disputed domain name which shows that the domain name is for sale at a price of US$499. However, the Panel notes that Policy ¶ 4(b)(i) specifically refers to selling a disputed domain name for “valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Here, the WHOIS record indicates that the domain name was created on August 13, 2018 for a one-year term, and the WHOIS history for the domain name does not indicate that the Respondent acquired the name from another party. In the absence of a response or other submission from the Respondent, the Panel finds it more likely than not that that Respondent acquired the disputed domain name at the normal US$8.48 per year registration price for .us domains as stated on the website of the concerned registrar. Thus, by listing the <bittrex.us> domain name for sale at a price that is significantly higher than the registrar’s one-year registration price for the name, the Panel concludes that Respondent registered it for the purposes of selling it at a profit. This, in turn, supports a finding of bad faith under Policy ¶ 4(b)(i).
Complainant also argues that Respondent registered and uses the <bittrex.us> domain name in bad faith because Respondent directs Internet traffic away from Complainant’s business to various competing webpages. Use of a domain name to divert internet users away from complainant’s webpage to a competing website may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). As previously stated, screenshots of the webpages associated with the disputed domain name, which show Internet users were initially redirected to a twitter page that promoted cryptocurrency trading platforms. Furthermore, current screenshots of Respondent’s disputed domain name show a webpage that contains pay-per-click links relating to competing cryptocurrency services. Therefore the Panel finds under a Policy ¶¶ 4(b)(iii) and (iv) analysis that Respondent uses the disputed domain name to disrupt Complainant’s business and that it seeks commercial gain based upon a likelihood of confusion with Complainant’s BITTREX mark.
Furthermore, Complainant alleges that Respondent attempts to phish for Internet users’ personal and/or financial information. However, for the reasons stated above, and in light of the Panel’s findings of other bases upon which to conclude that the Respondent used and registered the disputed domain name in bad faith, it is not necessary here to consider this particular allegation.
Finally, Complainant asserts that Respondent is a serial bad faith domain registrant. A respondent who serially attempts to register domain names to divert Internet traffic away from legitimate sites to its domains may be acting in bad faith per Policy ¶ 4(b)(ii). Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”). Complainant provides evidence that Respondent’s email address is associated with two other domain names that appear to adopt variations on well-known cryptocurrency related websites. In light of the limited evidence provided and the fact that Respondent has been found to have acted in bad faith on the other grounds stated above, the Panel sees no need to consider whether the Respondent has engaged in a pattern of bad faith registration in this case.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bittrex.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 5, 2018
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