Westmore · UDRP DecisionBit-fury.com
The Panel ordered transfer of <bit-fury.com> to Bitfury Group Limited. It found the domain confusingly similar to the registered BITFURY mark because it incorporated the mark in full with only an added hyphen. The Respondent did not rebut the Complainant’s prima facie case on rights or legitimate interests. Bad faith was established under paragraph 4(b)(iv) because the domain was used for a cryptocurrency investment website that intentionally created confusion with the Complainant for commercial gain. The Panel also relied on the timing of registration, the distinctiveness and renown of BITFURY, the privacy service, and the website’s reference to a dissolved entity.
The timeline behind bit-fury.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind bit-fury.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates that inserting a hyphen into a trademark generally does not avoid confusing similarity where the mark remains fully recognizable. It also shows how use of a near-identical domain for commercial services in a related sector can support both the absence of legitimate interests and paragraph 4(b)(iv) bad faith, particularly where surrounding website and registrant circumstances undermine any claim of bona fide activity.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bitfury Group Limited v. Whois Agent - Domain Protection Services Inc. / DomainWebber Case No. D2019-1303 1. The Parties The Complainant is Bitfury Group Limited, United Kingdom, represented by ARAMIS Société d’Avocats, France. The Respondent is Whois Agent - Domain Protection Services Inc., United States of America / DomainWebber, Canada. 2. The Domain Name and Registrar The disputed domain name <bit-fury.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”). 3. Procedural History 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 11, 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 14, 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 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019. The Center appointed Alistair Payne as the sole panelist in this matter on July 11, 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. 4. Factual Background The Complainant founded in 2014 is a company engaged in the development and provision of blockchain technology services. The Complainant owns registrations in various jurisdictions for its BITFURY trade mark including European Union trade mark No. 012966958 registered on December 08, 2014. One of the Complainant’s group companies, Bitfury Holdings B.V., operates a website from the domain name <bitfury.com> through which it sells all of the cryptocurrency mining software and related hardware products developed by the Complainant and its various group companies. The Respondent registered the disputed domain name on October 23, 2018. The disputed domain name resolves to a website that appears to offer Internet consumers the opportunity to invest in the crypto-currency market. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights in the BITFURY mark as set out above. It says that the disputed domain name is almost identical to its BITFURY mark as it wholly incorporates the word mark “bitfury” with the addition of a dash between the words “bit” and “fury”. The Complainant submits that this difference is imperceptible and is only a minor variation to the Complainant’s BITFURY mark and as a result the disputed domain name is identical or confusingly similar to the Complainant’s trade mark under the first element of the Policy. The Complainant says further that the Respondent has no rights or legitimate interests in the disputed domain name. Firstly, it submits that the Respondent does not own any BITFURY trade mark and secondly that it has not licensed, or permitted the Respondent to use its trade mark or to register it as a domain name. In addition, says the Complainant, the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. It notes that the disputed domain name resolves to a website that pretends to offer investment services within the cryptocurrency sector of activity of the Complainant by using the tagline “100%Profit Guarantee”. The Complainant asserts that this leads Internet users to believe incorrectly that the website at the disputed domain name is either operated by the Complainant or its affiliates or is authorised by the Complainant or its affiliates. This says, the Complainant, is not a legitimate noncommercial or fair use of the disputed domain name. The Complainant also notes that the United Kingdom registered company mentioned on the Respondent’s website was dissolved on April 30, 2019 and therefore does not carry on any activity at all. As a consequence, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. As far as bad faith is concerned, the Complainant says that due to the degree of renown attaching to the BITFURY marks and domain name, which is reflected in the various press articles submitted by way of evidence, the Respondent must have been aware of the Complainant’s BITFURY mark and business when it registered the disputed domain name. The Complainant asserts that the Respondent has registered and used the disputed domain name for the sole purpose of misleading and attracting the Complainant’s potential customers to the Respondent’s website by making them believe that the Respondent’s website is operated by the Complainant or is affiliated to the Complainant or one of its subsidiaries. It says that the Respondent is ultimately seeking to defraud and mislead Internet users by offering them fraudulent cryptocurrency investment services. The Complainant submits that this amounts to registration and use of the disputed domain name by the Respondent in bad faith and it notes that in similar circumstances other UDRP panels have found this kind of activity to amount to bad faith (see Bitfury Group Limited v. Maxim I Fedoseev , WIPO Case No. D2018-0654 and Bitfury Group Limited v. WhoisGuard Protected, WhoisGuard Inc. / Samson Olaleye , WIPO Case No. D2018-2056 ). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trade mark rights in the BITFURY mark, in particular, European Union trade mark No. 012966958 registered on December 08, 2014. The Complainant’s BITFURY mark is wholly contained in the disputed domain name. Further, the disputed domain name only differs from the Complainant’s BITFURY mark prior to the generic Top-Level Domain Name (“gTLD”) “.com”, by the addition of a dash between the word elements “bit” and “fury”. Previous panels have found that where the disputed domain name wholly incorporates the Complainant’s trade mark that this satisfies the requirements of the first element of the Policy. In any event, the mere addition of a dash in the middle of the Complainant’s mark, as incorporated into the disputed domain name, does not prevent a finding of confusing similarity between the Complainant’s trade mark and the disputed domain name. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered BITFURY trade mark and the Complainant therefore succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that based on its searches, the Respondent does not own any BITFURY trade mark and impliedly suggests that the Respondent is not known by that name or mark. Secondly, the Complainant says that the Respondent has not licensed, or permitted the Complainant to use its trade mark, or to register it as a domain name. Thirdly, the Complainant has asserted that the Respondent does not make a legitimate noncommercial, or fair use, of the disputed domain name. It notes that the disputed domain name resolves to a website that pretends to offer investment services within the cryptocurrency sector of activity in which the Complainant operates. It suggests that by using the tagline “100%Profit Guarantee”, the Respondent has led Internet users to believe incorrectly that the website at the disputed domain name is either operated by the Complainant or its affiliates, or is authorised by the Complainant or its affiliates. The Complainant has also noted that the United Kingdom registered company mentioned on the Respondent’s website was dissolved on April 30, 2019, and therefore does not carry on any activity at all. This says the Complainant, is not a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this case has not been rebutted by the Respondent. For this reason and also in view of the Respondent’s apparent use of the disputed domain name in bad faith to divert Internet users to its website, as described under section C below, including the fact that the Respondent company named on its website appears to be dissolved and therefore should not be holding itself as carrying on business, the Panel finds that the Complainant has also made out its case under this element of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered on October 23, 2018, several years after the registration of the Complainant’s trade marks. The Panel notes that the BITFURY mark appears to be something of a coined term and is therefore somewhat distinctive even in circumstances that it is made up of two common English words. The Complainant has provided evidence that the BITFURY mark and business has attracted a reasonable degree of media attention such that it is more than likely that a degree of renown attaches to the BITFURY mark and the Panel notes that the Complainant’s group of companies has long operated its own website from the domain name <bitfury.com>. In these circumstances the Panel considers that on the balance of probabilities the Respondent must have been aware of the Complainant’s mark and business when it registered the disputed domain name and that it did so intentionally, as further described below, in order to trade on the goodwill attached to the Complainant’s BITFURY mark. It is apparent that the disputed domain name resolves to a website at which the Respondent is operating an investment services platform in the cryptocurrency sector. It is apparent that it is using the disputed domain name wholly incorporating the Complainant’s distinctive and renowned mark in order to mislead Internet users into thinking that its website is operated by or associated with the Complainant when this is not the case and it is doing so for its own commercial gain. The Panel finds that such use amounts to intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or sponsorship of the Respondent’s website under paragraph 4(b)(iv) of the Policy and this amounts to evidence of registration and use of the disputed domain name in bad faith. The Panel’s view in this regard is only reinforced by the Respondent’s use of a privacy service in an attempt to hide its real identity and the mention on its website of an entity that has been dissolved and cannot carry on bona fide business. In these circumstances, the Panel finds it probable that the Complainant is correct when it asserts that the Respondent is ultimately seeking to defraud and mislead Internet users by offering them fraudulent cryptocurrency investment services through its website at the disputed domain name. As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complainant also succeeds under this element of the Policy. 7. Decision 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 <bit-fury.com> be transferred to the Complainant. Alistair Payne Sole Panelist Date: July 23, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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