DECISION

 

BitPay, Inc. v. Oliveira Silva

Claim Number: FA2501002137938

PARTIES

Complainant is BitPay, Inc. ("Complainant"), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Oliveira Silva ("Respondent"), Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bitpay.digital>, registered with HOSTINGER operations, UAB.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

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

 

On January 31, 2025, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <bitpay.digital> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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@bitpay.digital. 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 Paul M. DeCicco 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

Complainant contends in part as follows:

Complainant BitPay, Inc. is the world's largest Bitcoin payment processor and an award-winning, nationally-recognized leader in cryptocurrency and blockchain technology, including blockchain retail, ecommerce, billing, and donation tools using Bitcoin and Bitcoin Cash. Complainant has been continuously providing cryptocurrency services to merchants since at least 2011.

 

Complainant is the owner of registered trademarks in the United States Patent and Trademark Office ("USPTO") for the BITPAY mark.

 

Respondent's <bitpay.digital> domain addressed an active website that displayed Complainant's trademark and appears to have offered services like those offered by Complainant.

 

Respondent's <bitpay.digital> domain name is confusingly similar to a trademark in which Complainant has rights because the primary element of the domain name is the term BITPAY, which is identical to the text of the Complainant's trademark, merely followed by the gTLD "DIGITAL." The gTLD has no distinguishing capacity and thus does not alter the value of the trademark featured in the domain name.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent did not register the at-issue domain name until long after Complainant began using its relevant trademark and long after the U.S. Patent and Trademark Office issued the registrations for such mark. Respondent is not commonly known by the term "BitPay" or "BitPay Digital" and is not a licensee of Complainant. Respondent does not own any trademark or service mark rights in the domain name. Complainant's mark is distinctive and Complainant is unaware of any other use of its trademark or anything like it in the cryptocurrency and financial services industries. Respondent's use of the domain name cannot amount to the bona fide offering of goods or services.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent uses <bitpay.digital> 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 is evidence of bad faith given the circumstances of the case. Additionally, Respondent is believed to be using the <bitpay.digital> website for an illegitimate phishing scheme. Specifically, Complainant believes that Respondent uses the <bitpay.digital> website to solicit website visitors to open an account to accept payments that the visitor is unable to withdraw from the account. Finally, Respondent is not using the <bitpay.digital> domain name for a legitimate business purpose, as Respondent provided fake or inaccurate contact information in registering the domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the BITPAY mark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in BITPAY.

 

Respondent uses the at-issue domain name to pose as Complainant to take advantage of Complainant's trademark in furtherance of fraud.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant demonstrates rights in the BITPAY mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <bitpay.digital> domain name consists of Complainant's BITPAY trademark merely followed by the ".digital" top-level domain name. The differences between Complainant's trademark and Respondent's domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <bitpay.digital> domain name is confusingly similar to Complainant's BITPAY trademark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Domain Administrator / Registry Services, LLC, FA2 2038314 (Forum July 26, 2023)("The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).

 

The WHOIS information for the at-issue domain name identifies the registrant of <bitpay.digital> as "Oliveira Silva" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <bitpay.digital>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent attempts to pass itself off as Complainant. Respondent uses the at-issue domain name to address a website primarily in Spanish that might well be perceived as being an official or sponsored website of Complainant. Respondent's <bitpay.digital> website thus deceives consumers into falsely believing that Respondent and its phony website are somehow affiliated with Complainant. Respondent's use of the <bitpay.digital> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant")

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <bitpay.digital>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to the Policy.

 

As mentioned above, Respondent uses the at-issue domain name to address a website looking like it might be affiliated with Complainant. Notably, Respondent's website displays Complainant's mark throughout its content. Respondent's use of <bitpay.digital> to attempt to pass itself off as being related to Complainant is disruptive to Complainant's business and is intent on attracting internet users looking for Complainant to Respondent's website so that Respondent may capitalize on the confusion Respondent created between its <bitpay.digital> domain name and Complainant's BITPAY trademark. Respondent's use of <bitpay.digital> demonstrates Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting); see also, Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) ("Respondent's use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant's mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).")

 

Moreover, Respondent registered the <bitpay.digital> domain name with actual knowledge of Complainant's trademark rights in BITPAY. Respondent's prior knowledge of Complainant's rights is apparent given the notoriety of Complainant's trademark and from Respondent's use of the domain name to pose as Complainant using the at-issue domain name and its related website. Respondent's registration of <bitpay.digital> with knowledge of Complainant's trademark rights in BITPAY further indicates Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <bitpay.digital> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 25, 2025