Bittrex, Inc. v. LAYSA AMARAL DE FARIA
Claim Number: FA1901001823488
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is LAYSA AMARAL DE FARIA (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <account-bittrex.com>, registered with Tucows Domains 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 2, 2019; the Forum received payment on January 2, 2019.
On January 7, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <account-bittrex.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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@account-bittrex.com. Also on January 8, 2019, 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 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
Complainant is a U.S. based company that operates one of the leading cryptocurrency exchanges in the world under the BITTREX trademark. Complainant registered the BITTREX trademark 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).
Respondent’s <account-bittrex.com> domain name is confusingly similar as it incorporates Complainant’s entire BITTREX trademark, merely adding a hyphen, the generic or descriptive term “account”, and appends the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <account-bittrex.com> domain name. Respondent is not licensed or authorized to use Complainant’s BITTREX trademark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain 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.
Respondent registered or uses the <account-bittrex.com> domain name in bad faith. Respondent attempts to pass off as Complainant, for commercial gain, in furtherance of a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s mark when it registered the <account-bittrex.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following trademark registrations:
EU Trade Mark Registration No 016727109 BITTREX (word), applied for on May 15, 2017, and registered on October 13, 2017 for goods and services in classes 9, 36 and 42,
UK National Trademark Registration No UK00003231077 BITTREX (word), registered on October 6, 2017 for and services in classes 9, 36 and 42, and
US National Trademark Registration No 5,380,786 BITTREX (word), registered on January 16, 2018 for services in classes 36 and 42
Respondent registered the disputed domain name on August 17, 2018.
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 trademark based upon registration with the EUIPO (e.g. Reg. No. 016727109, registered Oct. 13, 2017), the UK IPO (e.g. Reg. No. UK00003231077 BITTREX, registered Oct. 6, 2017), and the USPTO (e.g. Reg. No. 5,380,786, registered on Jan. 16, 2018).
Registration of a trademark with multiple trademark organizations is sufficient to establish rights in said trademark 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.).
Therefore, the Panel finds that Complainant has rights in the BITTREX trademark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <account-bittrex.com> domain name is confusingly similar to Complainant’s trademark. The Panel notes that Respondent merely has added a descriptive or generic term (“account”), a hyphen, and a gTLD (.com) to Complainant’s BITTREX trademark. Such kind of additions does not negate any confusing similarity between a disputed domain name and a trademark 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel therefore agrees with Complainant, and finds that the <account-bittrex.com> is confusingly similar to Complainant’s BITTREX mark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 <account-bittrex.com> domain name, based on that the Respondent is not licensed or authorized to use the BITTREX trademark 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 in this case identifies Respondent as “LAYSA AMARAL DE FARIA,” and there is no other evidence to suggest Respondent was authorized to use the BITTREX trademark. The Panel therefore finds that 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 <account-bittrex.com> domain name to pass off as Complainant in order to perpetrate a phishing scheme. Using a disputed domain name to pass off and 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).
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).
Complainant argues that Respondent registered or uses the <account-bittrex.com> in bad faith as Respondent attempts to pass off as Complainant in furtherance of a phishing scheme for Respondent’s commercial gain. Use of a disputed domain name to pass off as a complainant in furtherance of a phishing scheme 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 according to the Iris platform (which helps security teams investigate potential cybercrime and cyberespionage) assessed the disputed domain name as having a Proximity score of 99/100. The Proximity score means that the disputed domain name is associated with other malicious or dangerous domains held by the same organization.
Therefore, the Panel finds that Respondent registered and uses the <account-bittrex.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the <account-bittrex.com> domain name with actual knowledge of Complainant’s rights in the BITTREX trademark. 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). Here, Complainant argues that Respondent’s knowledge of Complainant’s trademark prior to registering <account-bittrex.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to host a website in furtherance of a phishing scam.
The Panel finds that there are indeed clear indications pointing to that Respondent registered the <account-bittrex.com> domain name with actual knowledge of Complainant’s BITTREX trademark, 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 <account-bittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 14, 2019
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