The Complainant is Bitfury Group Limited of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by HBC Avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Samson Olaleye of Ogbomoso, Nigeria.
The disputed domain name <bitfurynetwork.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on September 10 and 11, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 2, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant provides blockchain hardware and software services into various international markets. The Complainant has obtained the following registrations of the mark BITFURY (the “Mark”):
- European Union trademark no 012966958, registered on December 8, 2014 (classes no 9, 35, 36, 42);
- International trademark no 1238905, registered on December 10, 2014 (classes no 9, 35, 36, 42);
- International trademark no 1242715, registered on January 28, 2015 (classes no 9, 35, 36, 42);
- Benelux trademark no 0976425, registered on June 9, 2015 (classes no 38, 41, 45);
- Benelux trademark no 0978898, registered on July 17, 2015 (classes no 11, 16, 37).
The Complainant owns and operates a website at the domain “www.bitfury.com”.
The disputed domain name was registered on April 17, 2018, and resolved to a website offering blockchain related services.
The Complainant contends the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is composed of the Complainant’s Mark plus the term “network”. The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name or the Mark as the Respondent is not commonly known by the Mark and has never undertaken any bona fide business or commercial activity under the Mark or the disputed domain name. Finally, the Complainant asserts the disputed domain name was registered and is being used in bad faith to cause unsuspecting Internet users to believe that the Respondent’s website is sponsored by or affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds the disputed domain name is confusingly similar to the Mark. The disputed domain name is composed only of the Mark and the generic term “network” utilized as a suffix. The mere addition of a generic term such as “network” generally fails to avoid a finding of confusing similarity. Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.) Further, the generic Top-Level Domain (“gTLD”) is a standard registration requirement and as such is disregarded under the confusing similarity test. Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Société Nationale des Chemins de FerFrançais, SNCF v. TransureEnterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0447.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing any license or authorization to the Respondent to use the Mark or the disputed domain name. Moreover, the Respondent has failed to provide any evidence that the Respondent has been known by the Mark or any of its components while conducting legitimate business activities. World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The Panel finds that the disputed domain name was registered and used in bad faith. It is inconceivable that the Respondent would innocently compose the disputed domain name by seizing upon the Complainant’s distinctive Mark and merely add the term “network” without knowledge of the Complainant’s Mark. The Respondent’s bad faith is highlighted by the simple fact that the Respondent has attempted to pass itself off as the Complainant by using on the Respondent’s website the Complainant business identification number and address and offering blockchain related products and services. The Respondent has clearly attempted to confuse and divert Internet customers to its own website for commercial gain and profit. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (only feasible explanation for registration of the domain name is intention to cause confusion, mistake and deception).
The Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bitfurynetwork.com> be transferred to the Complainant.
William F. Hamilton
Date: November 6, 2018
Stay updated! Get new cases and decisions by daily email.