Bittrex, Inc. v. M D
Claim Number: FA2001001878566
Complainant is Bittrex, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington. Respondent is M D (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <global-bittrex.com>, registered with GoDaddy.com, LLC.
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 10, 2020; the Forum received payment on January 10, 2020.
On January 13, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <global-bittrex.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2020 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@global-bittrex.com. Also on January 15, 2020, 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 February 6, 2020, 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
The Complainant is a U.S.-based company that operates the leading cryptocurrency exchange platform in the world. Complainant has rights in the BITTREX trademark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,380,786, registered Jan. 16, 2018). Respondent’s <global-bittrex.com> domain name is confusingly similar to Complainant’s BITTREX trademark as Respondent merely incorporates the trademark in its entirety while adding the descriptive or generic term “global,” a hyphen, and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <global-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 fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in connection with a phishing email scheme. In addition, Respondent uses the disputed domain name to redirect to Complainant’s own website.
Respondent registered and uses the <global-bittrex.com> domain name in bad faith. In addition to use in connection with an email phishing scheme, and to redirect to Complainant’s legitimate website, Respondent had prior knowledge of Complainant’s rights in the BITTREX trademark due to Respondent’s use of the disputed domain name to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
United Kingdom National Trademark Registration No UK00003231077 BITTREX (word), registered October 6, 2017 for goods and services in classes 9, 36 and 42;
European Union Trade Mark Registration No 016727109 BITTREX (word), registered October 13, 2017 for goods and services in classes 9, 36 and 42; and
U.S. Trademark Registration No 5,380,786 BITTREX (word), registered January 16, 2018 for services in classes 36 and 42.
Respondent registered the <global-bittrex.com > domain name on October 29, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the BITTREX trademark based upon registrations with the EUIPO (e.g. Reg. No. 016727109, registered October 13, 2017), the U.K. (e.g. Reg. No. 3231077, registered on October 6, 2017) and the USPTO (e.g. Reg. No. 5,380,786, registered on January 16, 2018).
Registration of a trademark with multiple trademark national or international offices 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 argues that Respondent’s <global-bittrex.com> domain name is confusingly similar to the BITTREX trademark, as the domain name incorporates the trademark in its entirety along with the generic or descriptive term “global,” a hyphen, and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated trademark in a Policy ¶ 4(a)(i) analysis. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore determine that the <global-bittrex.com> domain name is confusingly similar to the BITTREX trademark 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 the <global-bittrex.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BITTREX trademark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the 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 disputed domain name as “M D,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed <global-bittrex.com> domain name.
Additionally, Complainant argues that Respondent does not use the <global-bittrex.com> name for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather uses the domain name in furtherance of a phishing scheme. Use of an email address associated with the disputed domain name to pass off as a complainant in furtherance of phishing is definitely not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant argues that Respondent uses the disputed domain name to carry out a phishing scheme by sending fraudulent emails to Internet users in Complainant’s name. The Panel notes that Complainant provides a Declaration stating that one of Complainant’s customers received a fraudulent email asking for the customer’s confidential information and payment in cryptocurrency. Complainant also provides a screenshot of the email sent to Complainant’s customer in which the email sender impersonated Complainant, used an email address of the disputed domain name, and included hyperlinks which resolved to websites passing off as Complainant and providing cryptocurrency listing services that presumably are connected to Respondent. The Panel therefore finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further argues that Respondent uses the <global-bittrex.com> domain name to redirect Internet users to Complainant’s own legitimate website. Using a disputed domain name to redirect to a complainant’s own website is not indicative of a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also Bank of America Corporation v. Show Girls, FA1804001783413 (Forum May 30, 2018) (finding that respondent’s use of a confusingly similar domain name to redirect users to the complainant’s own website was not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy). Complainant argues that using the disputed domain name to redirect to Complainant’s own website allows for the possibility that Respondent may at any time cause internet traffic to redirect to a website that is not associated with Complainant. The Panel agrees with the Complainant’s conclusion, and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent registered and uses the <global-bittrex.com> domain name in bad faith because Respondent uses the disputed domain name in furtherance of a phishing scheme. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may definitely constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
As previously mentioned, Complainant claims that Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s customers, presumably designed to solicit information under false pretenses. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent’s use of the <global-bittrex.com> domain name to redirect Internet users to Complainant’s own website. Redirecting traffic to a complainant’s website may constitute bad faith per Policy ¶ 4(a)(iii). See D Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website which clearly redirects Internet users’ to Complainant’s own website. The Panel therefore agrees and finds that Respondent’s use of the <global-bittrex.com> domain name to redirect to Complainant’s legitimate website constitutes bad faith use and registration under Policy ¶ 4(a)(iii).
Finally, Complainant contends that in light of the fame and notoriety of its BITTREX trademark, it is inconceivable that Respondent could have registered the <global-bittrex.com> domain name without actual or constructive knowledge of Complainant's rights in the trademark. The Panel here find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel however agree with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and find 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.”). Complainant asserts that Respondent’s use of the BITTREX trademark in its domain name and phishing behavior relating to Complainant’s actual business (cryptocurrency exchange), indicates it had actual knowledge of Complainant’s business and rights in the mark. The Panel agrees with the Complainant’s conclusion, and finds Respondent had actual knowledge of Complainant’s rights in the BITTREX mark and thus registered the name in bad faith under 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 <global-bittrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 14, 2020
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