Bittrex, Inc. v. Andrei Zaripov / Private Person
Claim Number: FA1812001820739
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Andrei Zaripov / Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biittrex.co>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
PRELIMINARY ISSUE: Language of the proceeding
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors relevant to that determination include the following: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Russian language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. Accordingly, the Panel decides that the proceeding should be in English.
Complainant submitted a Complaint to the Forum electronically on December 12, 2018; the Forum received payment on December 12, 2018.
On December 14, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <biittrex.co> 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 December 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@biittrex.co. Also on December 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 January 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a US-based company that operates one of the leading cryptocurrency exchanges in the world in connection with the BITTREX mark. Complainant has rights in the BITTREX mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018), the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00003231077, registered October 6, 2017), and the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016727109, registered October 13, 2017).
2. Respondent’s <biittrex.co>[i] domain name is confusingly similar to Complainant’s BITTREX mark as Respondent merely adds an extra “i” and a “co” country code top-level domain (“ccTLD”) to the mark.
3. Respondent has no rights or legitimate interests in the <biittrex.co> domain name. Respondent is not licensed or authorized to use Complainant’s BITTREX mark as is not commonly known by the domain name.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant in furtherance of a phishing scheme. Further, Respondent’s domain name resolves to an inactive website.
5. Respondent registered and uses the <biittrex.co> domain name. Respondent attempts to attract, for commercial gain, users to the resolving website where it passes off as Complainant in furtherance of a phishing scheme.
6. Further, Respondent fails to actively use the domain name.
7. Finally, Respondent had actual knowledge of Complainant’s rights in the BITTREX mark prior to registering and subsequent use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITTREX mark. Respondent’s domain name is confusingly similar to Complainant’s BITTREX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <biittrex.co> domain name and that Respondent registered and uses the domain name 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); 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 has rights in the BITTREX mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018), the UKIPO (e.g., Reg. No. UK00003231077, registered October 6, 2017), and the EUIPO (e.g., Reg. No. 016727109, registered October 13, 2017). Registration of a mark with multiple trademark offices is sufficient to establish rights in that mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014).
Complainant next argues Respondent’s <biittrex.co> domain name is confusingly similar to the BITTREX mark, as the name misspells the mark with an extra “i” and a “.co” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’); see also 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.”). The Panel holds that the <biittrex.co> domain name is confusingly similar to the BITTREX mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <biittrex.co> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <biittrex.co> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BITTREX mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“[T]he pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the <biittrex.co> domain name as “Andrei Zaripov / Private Person,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <biittrex.co> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <biittrex.co> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has provided evidence that Respondent mimics Complainant’s website and attempts to obtain users’ login and passwords for their BITTREX accounts. Use of a domain name incorporating the mark of another to pass off as a complainant in furtherance of phishing is not indicative of any rights or legitimate interests 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.”). Complainant provides a screenshot of the domain name’s resolving website, dated November 20, 2018, which appears to copy Complainant’s blue-colored website and features a log-in page. Complainant has provided credible evidence that Respondent uses this website to secure Complainant’s customers’ credentials and subsequently steal from users’ accounts. Therefore, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s failure to use the <biittrex.co> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Respondent’s inactive holding of the domain name is evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's BITTREX mark, it is inconceivable that Respondent could have registered the <biittrex.co> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <biittrex.co> domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <biittrex.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 20, 2019
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