Bittrex, Inc. v. MARCELA VALENTIM DE MORAIS / TELMO GOMES DOS SANTOS FORTE PAPELARIA
Claim Number: FA1812001821743
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is MARCELA VALENTIM DE MORAIS / TELMO GOMES DOS SANTOS FORTE PAPELARIA (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <security-bittrex.com>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2018; the Forum received payment on December 18, 2018.
On December 19, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <security-bittrex.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@security-bittrex.com. Also on December 20, 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 11, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Bittrex, Inc., 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 multiple registries including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018). See Amend. Compl. Exs. E2, E3. Respondent’s <security-bittrex.com> domain name is confusingly similar as it incorporates Complainant’s entire BITTREX mark, merely adding a hyphen, the term “security”, and appends the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <security-bittrex.com> domain name. Respondent is not licensed or authorized to use Complainant’s BITTREX mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s resolving webpage is designed to impersonate Complainant in order to phish for personal information belonging to Complainant’s users.
iii) Respondent registered or uses the <security-bittrex.com> domain name in bad faith. Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Respondent also uses the disputed domain name to host a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s mark when it registered the <security-bittrex.com> domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Respondent registered the disputed domain name on August 23, 2018.
2. Complainant has established its rights in the BITTREX mark through registrations with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016727109, registered Oct. 13, 2017) and the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018).
3. Respondent uses the disputed domain name to host a phishing scheme.
4. Respondent attempts to pass off as 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.”).
Complainant asserts rights in the BITTREX mark based upon registration with the EUIPO. Registration of a mark with multiple trademark organizations is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Complainant provides copies for its trademark registrations with both the EUIPO (e.g., Reg. No. 016727109, registered Oct. 13, 2017) and the USPTO (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018). See Amend. Compl. Ex. E2, E3. Therefore, the Panel finds Complainant has rights in the BITTREX mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <security-bittrex.com> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues Respondent merely adds a descriptive term, a hyphen, and a gTLD to Complainant’s BITTREX mark. Additions of a generic or descriptive term, hyphen, or a gTLD do not negate any confusing similarity between a disputed domain name and mark under 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 AbbVie Inc. v. Season Advertising, S.L., FA1704001727071 (Forum Jun. 12, 2017) (finding confusing similarity where the disputed domain name <abbvie-hcv.com> incorporated complainant’s entire mark and appended “a hyphen, followed by two or three additional letters and the gTLD ‘.com’”). Complainant argues Respondent merely adds the descriptive term “security”, followed by a hyphen and a “.com” gTLD to Complainant’s BITTREX mark. The Panel agrees with Complainant and finds that the <security-bittrex.com> is confusingly similar to Complainant’s BITTREX mark 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), then the burden shifts to Respondent to show 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 argues that Respondent has no rights or legitimate interests in <security-bittrex.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the BITTREX mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record identifies Respondent as “MARCELA VALENTIM DE MORAIS / TELMO GOMES DOS SANTOS FORTE PAPELARIA,” and there is no other evidence to suggest Respondent was authorized to use the BITTREX mark. See Amend. Compl. Ex. A. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <security-bittrex.com> domain name in connection with a phishing scam. Using a disputed domain name to conduct a phishing scheme is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Here, Complainant contends that the disputed domain name is identified on the Ethereum Scam Database as being in use in connection with a phishing scam. See Amend. Compl. Ex. F2. In addition, the Iris cyber security team assessed the disputed domain name as having a Proximity score of 100/100. See Amend. Compl. Ex. F5. Therefore, the Panel finds that such use is not 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 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 name.
Complainant argues that Respondent registered or uses the <security-bittrex.com> in bad faith as Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Use of a disputed domain name to pass off as a complainant for a respondent’s commercial gain may evince a finding of bad faith pursuant to 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.”). Complainant asserts Respondent uses the disputed domain name to direct Internet users to a website that directly copies Complainant’s website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. See Amend. Compl. Ex. F1. Therefore, the Panel finds that Respondent registered or uses the <security-bittrex.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant contends Respondent uses the disputed domain name to host a phishing scheme. Use of a disputed domain name in connection with a phishing scheme does not represent good faith per Policy ¶ 4(a)(iii). See 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).”). As previously mentioned, the disputed domain name is identified on the Ethereum Scam Database as being in use in connection with a phishing scam. See Amend. Compl. Ex. F2. In addition, the Iris cyber security team assessed the disputed domain name as having a Proximity score of 100/100. See Amend. Compl. Ex. F5. The Panel agrees with Complainant and finds Respondent registered or used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <security-bittrex.com> domain name with actual knowledge of Complainant’s rights in the BITTREX mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <security-bittrex.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to host a fraudulent website which features Complainant’s mark in the disputed domain name. See Amend. Compl. Ex. F2. Therefore, the Panel infers that Respondent registered the <security-bittrex.com> domain name with actual knowledge of Complainant’s BITTREX mark, thus demonstrating bad faith per 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 <security-bittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 14, 2019
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