DECISION

 

BitPay, Inc. v. xm Charlie

Claim Number: FA2501002137873

PARTIES

Complainant is BitPay, Inc. ("Complainant"), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is xm Charlie ("Respondent"), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bitcryptopay.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 30, 2025; Forum received payment on January 30, 2025.

 

On January 30, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bitcryptopay.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 February 3, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2025 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@bitcryptopay.com. Also on February 3, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 25, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

(i) Complainant BitPay, Inc. is the world's largest Bitcoin payment processor and an award-winning, nationally recognized leader in cryptocurrency and blockchain technology. Complainant asserts rights in the BITPAY mark, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,734,069, registered May 12, 2015). The disputed domain name is confusingly similar to Complainant's BITPAY mark, as it incorporates the mark in its entirety, with the only difference being the addition of the generic term "CRYPTO" in the middle.

 

(ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITPAY mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Respondent uses the disputed domain name to impersonate Complainant and likely intends to use it to carry out phishing schemes.

 

(iii) Respondent registered and is using the disputed domain name in bad faith. Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's mark. Respondent's concealment of its true identity and provision of false or fictitious contact information on the website constitutes evidence of bad faith. Respondent is using the disputed domain name for an illegitimate phishing scheme and is not using it for a legitimate business purpose. Respondent had constructive knowledge of Complainant's rights in the BITPAY mark at the time of registering the disputed domain name.

 

B. Respondent

Respondent did not submit a formal Response in this proceeding. Instead, on February 25, 2025, Respondent sent two emails to Forum, stating that the logo similarity was coincidental and that the website was abandoned with no status. Respondent confirmed that the site was closed and would not be used, emphasizing respect for beautiful design and a desire to avoid controversy, wishing for a better world.

 

FINDINGS

1. The disputed domain name was registered on December 13, 2023.

2. Complainant has established rights in the BITPAY mark, inter alia, through its registration of the mark with the USPTO (e.g., Reg. No. 4,734,069, registered May 12, 2015).

3. The disputed domain name resolves to a website that facilitates applications for a "Bitpay" card account as part of a payment processing scheme designed to induce customers to deposit money into their "Bitpay" account.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the BITPAY mark, inter alia, through its registration of the mark with the USPTO (e.g., Reg. No. 4,734,069, registered May 12, 2015). Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Complainant has submitted evidence of its trademark registration with the USPTO. Therefore, the Panel finds that Complainant has established rights in the BITPAY mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name <bitcryptopay.com> is confusingly similar to Complainant's BITPAY mark, as it incorporates the mark in its entirety, with the only difference being the addition of the generic term "crypto" in the middle. The mere addition of a generic term and gTLD is not sufficient to distinguish a disputed domain name from a mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top-level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's BITPAY mark.

 

Rights or Legitimate Interests

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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS data lists "xm Charlie" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant asserts that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent has exploited the domain by resolving it to a website that prominently displays a nearly identical logo to BitPay's logo, thereby luring customers into providing their email addresses to apply for a "Bitpay" card account as part of a payment processing scheme designed to induce customers to deposit money into their "Bitpay" account.

 

Using a disputed domain name to impersonate a complainant in furtherance of a phishing scheme does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See AbbVie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

The Panel observes from Complainant's evidence, including screenshots of the website associated with the disputed domain name, that the website prominently features a nearly identical logo to BitPay's logo, the phrases "One Card to Explore Crypto" and "Pay with Crypto. Everywhere," as well as an image of a smartphone displaying a nearly identical logo to BitPay's logo and a credit card image featuring the terms "Bitpay" and the Mastercard logo. Therefore, the Panel finds that Respondent created the website associated with the disputed domain name to mislead customers into providing their email addresses to apply for a "Bitpay" card account as part of a payment processing scheme designed to induce customers to deposit money into their "Bitpay" account. The Panel finds that Respondent's actions are illegal and malicious, and therefore, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Based on these findings, the Panel determines that Complainant has established a prima facie case regarding Respondent's lack of rights or legitimate interests in the disputed domain name. As Respondent has not submitted a response or rebutted the prima facie case in any way, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's mark. Complainant further contends that Respondent is using the disputed domain name as part of a phishing scam. Respondent has exploited the domain by resolving it to a website that prominently displays a nearly identical logo to BitPay's logo, thereby deceiving customers into providing their email addresses to apply for a "Bitpay" card account as part of a payment processing scheme designed to induce customers to deposit money into their "Bitpay" account.

 

Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith by disrupting a complainant's business under Policy ¶ 4(b)(iii) and/or an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Teleflex Incorporated and Teleflex Medical Incorporated v. Andrew Missick, FA1962696 (Forum October 6, 2021) (finding bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv) where the respondent posed as Complainant's Corporate Vice President and President for Global Commercial through email in an attempt to solicit bank wire information from Complainant's partners.); see also 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)").

 

The Panel notes that the website prominently features a nearly identical logo to BitPay's logo, the phrases "One Card to Explore Crypto" and "Pay with Crypto. Everywhere," as well as an image of a smartphone displaying a nearly identical logo to BitPay's logo and a credit card image featuring the terms "Bitpay" and the Mastercard logo. Therefore, the Panel finds that Respondent created the website associated with the disputed domain name to mislead customers into providing their email addresses to apply for a "Bitpay" card account as part of a payment processing scheme designed to induce customers to deposit money into their "Bitpay" account. The Panel finds that Respondent's actions are illegal and malicious and disrupt Complainant's business. Therefore, the Panel agrees with Complainant and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).

 

Additionally, Complainant contends that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant's rights in the BITPAY mark. While constructive knowledge is insufficient to establish a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge of a complainant's trademark rights is sufficient to establish bad faith and may be demonstrated by a respondent's use of the disputed domain name as an email address to impersonate Complainant. 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."); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.").

 

The Panel infers that, due to the notoriety of Complainant's mark and the manner in which the disputed domain name is used, Respondent had knowledge of Complainant's rights in the BITPAY mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bitcryptopay.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 25, 2025