The Complainant is Bitfury Group Limited, LLC, Cayman Islands, represented by ARAMIS Avocats, France.
The Respondent is Domains By Proxy, LLC, United States of America / Raza Ali, United Arab Emirates.
The disputed domain name <bitfuryonline.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, 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 June 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2019.
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 June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 24, 2019. 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 language of this administrative proceeding is English, that being the language of the registration agreement.
The Complainant, founded in 2014, is one of the leading companies involved in developing and providing various blockchain technology services and products on a worldwide basis
The Complainant among others owns the following registrations for the word mark BITFURY:
- International Trademark Registration No. 1238905 registered on December 10, 2014 for goods and services of classes 9, 35, 36, and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (the “Nice Classification”),
- European Union Trademark Registration (“EUTM”) No. 012966958 registered on December 8, 2014 for goods and services of classes 9, 35, 36, and 42 of the Nice Classification.
Since September 21, 2004, the Complainant owns the domain name <bitfury.com> which gives access to its official website.
The disputed domain name <bitfuryonline.com> was created on October 5, 2018 and has been used as a fraudulent website reproducing without any authorization the layout, design and content of the Complainant’s <bitfury.com> official website.
The Complainant contends that the disputed domain name is almost identical to its BITFURY trademark.
The only difference between the Complainant’s BITFURY trademark and the disputed domain name <bitfuryonline.com> is the addition of the word “online” to the mark BITFURY which is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith since the disputed domain name relates to a website which without any authorization completely reproduces the Complainant <bitfury.com> official website.
The Complainant requests that the disputed domain name <bitfuryonline.com> be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced indisputable evidence of having registered rights in the trademark BITFURY.
For the purpose of this proceeding the Panel establishes that the International Trademark Registration No. 1238905 and EUTM Registration No. 012966958 for the word mark BITFURY satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights in the BITFURY mark, the Panel next assessed whether the disputed domain name <bitfuryonline.com> is identical or confusingly similar to it.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant trademark.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The only difference between the disputed domain name <bitfuryonline.com> and the Complainant’s BITFURY trademark is the addition of the dictionary word “online” to the BITFURY trademark.
This addition in view of the Panel does not prevent the finding of confusing similarity between the disputed domain name <bitfuryonline.com> and the Complainant’s BITFURY trademark.
The applicable TLD suffix in the disputed domain name, “.com”, should in relation to this administrative proceeding be disregarded.
On the basis of facts and circumstances discussed above the Panel finds that the disputed domain name <bitfuryonline.com> is confusingly similar to the Complainant’s BITFURY trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the BITFURY trademark.
The Complainant has never authorized the Respondent to use the BITFURY trademark in any way, and its prior rights in the BITFURY trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, 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 the 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.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The evidence presented by the Complainant convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The BITFURY trademark of the Complainant has a strong reputation and due to its substantial and continued use is widely known.
The disputed domain name <bitfuryonline.com> has been resolving to a “copycat” website with the same layout, design, content, and contact details as the Complainant’s official website at the domain name <bitfury.com>.
This not only shows that the Respondent clearly knew of the Complainant’s BITFURY trademark when registering the disputed domain name, but it’s also a fraudulent conduct and as such, in accordance with paragraph 4(b)(iv) of the Policy straightforward evidence of registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <bitfuryonline.com> be transferred to the Complainant.
Date: August 7, 2019
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