Bittrex, Inc. v. Nubia Silvana Lima Machado / GRACIELA TEREZA COLETTI
Claim Number: FA1812001820496
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Nubia Silvana Lima Machado (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bittrex-yds.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com, and <bittrex-ydd.com>, registered with Hostinger, UAB.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2018; the Forum received payment on December 11, 2018.
On December 13, 2018, Hostinger, UAB and PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bittrex-yds.com> and <bittrex-ydd.com> domain names are registered with Hostinger, UAB and PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Hostinger, UAB and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the Hostinger, UAB and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2019 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-yds.com, postmaster@bittrex-ydd.com. Also on December 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 January 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 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
i) Complainant is a U.S.-based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX mark. Complainant registered the BITTREX mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018). See Compl. Ex. E3. Respondent’s <bittrex-yds.com> and <bittrex-ydd.com> domain names are confusingly similar to Complainant’s mark as they each wholly incorporate Complainant’s BITTREX mark and add a hyphen, indiscriminate letters (“yds” or “ydd”), and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has not rights or legitimate interests in the <bittrex-yds.com> and <bittrex-ydd.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses both domain names for nefarious purposes. See Compl. Ex. F.
iii) Respondent registered and uses the <bittrex-yds.com> and <bittrex-ydd.com> domain names in bad faith. Respondent uses the domain names in connection with malicious software and/or phishing schemes. See Compl. Ex. F. Further, Respondent’s use of the confusingly similar domain names in connection with phishing scams shows that Respondents had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering the infringing domain names.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the <bittrex-yds.com> and <bittrex-ydd.com> domain names on August 4, 2018.
2. Complainant has established rights in the BITTREX mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,380,786, registered January 16, 2018).
3. Respondent uses the domain names in connection with malicious software and/or phishing schemes.
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.”).
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Portuguese, thereby making the language of the proceedings in Portuguese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends the disputed domain names are based on the name of an American company, and the website screen captures associated with the disputed domain names are almost entirely in English and targets English speakers. Further, Complainant is neither conversant nor proficient in the Portuguese language and would require delay and unnecessary costs to translate the document.
Pursuant to UDRP Rule 11(a), after considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Complainant contends that the following indicate that the domain names are registered to the same person or are under common control: (1) the domain names were registered on the same date; (2) both list addresses in Brazil; (3) both use similar naming conventions; and, (4) both domains were created in connection with <wordpress.com> sites.
The Panel finds the domain names are commonly controlled by a single Respondent who is using multiple aliases.
Complainant claims rights in the BITTREX mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,380,786, registered Jan. 16, 2018). See Compl. Ex. E3. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “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).”). Accordingly, the Panel finds that Complainant has established rights in the BITTREX mark.
Complainant next argues that Respondent’s <bittrex-yds.com> and <bittrex-ydd.com> domain names are confusingly similar to Complainant’s mark as they each wholly incorporate Complainant’s BITTREX mark and add a hyphen, indiscriminate letters (“yds” or “ydd”), and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 the disputed domain names are confusingly similar to the BITTREX mark under 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), 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) (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 <bittrex-yds.com> and <bittrex-ydd.com> domain names. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. 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). The WHOIS identifies “GRACIELA TEREZA COLETTI” as the registrant for the <bittrex-yds.com> domain name, and identifies “Nubia Silvana Lima Machado / Nubia Silvana Lima Machado” as the registrant for the <bittrex-ydd.com> domain name. See Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BITTREX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <bittrex-yds.com> and <bittrex-ydd.com> domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <bittrex-yds.com> and <bittrex-ydd.com> domain names for nefarious phishing purposes. Complainants may use phishing attempts to evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides “Ethereum” and “Iris” scores for each domain name, scores which determine the likelihood of misuse of domain names, both of which have scores of 94/100, indicative of Respondent’s misuse of the domain names. See Compl. Ex. F. As such, the Panel finds that Respondent uses the domain names in connection with phishing, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and is using the <bittrex-yds.com> and <bittrex-ydd.com> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain names to commercially benefit by phishing for consumer information. Commercially benefiting from phishing for information can evince bad faith under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant provides “Ethereum” and “Iris” scores for each domain name, scores which determine the likelihood of misuse of domain names, both of which have scores of 94/100, indicative of Respondent’s misuse of the domain names. See Compl. Ex. F. The Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
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-yds.com> and <bittrex-ydd.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 12, 2019
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