Bittrex, Inc. v. james ghost
Claim Number: FA1811001814850
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is james ghost (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.com> (“Domain Names”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2018; the Forum received payment on November 2, 2018.
On November 6, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.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 November 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@wwv-bittrex.com, postmaster@wvw-bittrex.com, postmaster@bjttnex.com, and postmaster@bittrew.com. Also on November 6, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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
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 through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,380,786, registered Jan. 16, 2018). Respondent’s <wwv-bittrex.com> and <wvw-bittrex.com> domain names are confusingly similar to the BITTREX mark as they add a misspelling of the prefix “www,” a hyphen, and the “.com” generic top-level domain (“gTLD”). Respondent’s <bjttnex.com> and <bittrew.com> domain names are confusingly similar to the BITTREX mark as they misspell Complainant’s mark and add the “.com” gTLD.
Respondent has no rights or legitimate interests in the <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.com> Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use the BITTREX mark in any manner. Respondent’s use of the Domain Names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the website at the <wwv-bittrex.com> domain name currently displays, and the website at the <bittrew.com> domain name previously displayed, a copy of Complainant’s own login page, likely to phish for information. Further, Respondent fails to use the resolving webpages for the <wvw-bittrex.com> and <bjttnex.com> domain names, however the tab for the website reachable from the <bjttnex.com> domain name displays Complainant’s logo, meaning Respondent will likely use both domain names to engage in phishing.
Respondent registered and is using the <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.com> Domain Names in bad faith. Respondent uses the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its websites to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Respondent creates this confusion to either pass off as Complainant, or to display webpages with no substantive content. Further, Respondent likely uses all of the Domain Names, or intends to use them, to phish for customer information. Further, such use of the BITTREX mark, or a simple misspelling of the mark, in the Domain Names indicates that Respondent had actual knowledge of Complainant’s rights in the BITTREX mark at the time it registered the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITTREX mark. The Domain Names are confusingly similar to Complainant’s BITTREX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and has used of the Domain Names 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:
(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).
Complainant has rights in the BITTREX mark based upon its registration with the USPTO. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The Panel finds that each of the <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.com> Domain Names are confusingly similar to the BITTREX mark. The <wwv-bittrex.com> and <wvw-bittrex.com> domain names fully incorporate the BITTREX mark adding a misspelling of the prefix “www,” a hyphen, and the “.com” gTLD. Such additions do not mitigate any confusing similarity between a disputed domain name and the mark under a Policy ¶ 4(a)(i) analysis. See Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The <bjttnex.com>, and <bittrew.com> domain names are misspellings of the BITTREX Mark and add the “.com” gTLD. Such changes are also insufficient to dispel the confusing similarity between the domain names and the BITTREX Mark. See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”);
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BITTREX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “james ghost” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
I am satisfied on the basis of the evidence before me that the website at the <wwv-bittrex.com> domain name currently displays, and the website at the <bittrew.com> domain name previously displayed, a copy of Complainant’s own login page and that the only reasonable explanation for such conduct is that the Respondent uses, has used, or intends to use (in the case of the <bjttnex.com>, and <bittrew.com> domain names, registered one day later) each of the Domain Names for the purposes of phishing. The use of domain names to pass off as a complainant in order to conduct a fraudulent scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Therefore, the Panel concludes that Respondent fails to use the domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the period in which the Domain Names were registered, October 6-7, 2018, Respondent had actual knowledge of Complainant’s well-known BITTREX mark. The website at <wwv-bittrex.com> domain name currently displays, and the website at the <bittrew.com> domain name previously displayed, a copy of Complainant’s own login page. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Names in bad faith by attempting to pass itself off as Complainant for Respondent’s commercial gain. While three of the Domain Names are presently inactive, the use of the <wwv-bittrex.com> domain name and the prior use of the <bittrew.com> domain name, and the absence of any alternative explanation, satisfies the Panel that the Respondent used the Domain Names deliberately as part of a scheme to trade of the goodwill of Complainant’s BITTREX mark for Respondent’s commercial gain. This amounts to bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds 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 <wwv-bittrex.com>, <wvw-bittrex.com>, <bjttnex.com>, and <bittrew.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 1, 2018
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