WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bitfury Group Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Kingsley Louis

Case No. D2019-1305

1. The Parties

The Complainant is Bitfury Group Limited, Cayman Islands, represented by ARAMIS Société d’Avocats, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kingsley Louis, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bitfuryinvestment.com> is registered with NameCheap, Inc. (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 19, 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 24, 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.

The Center appointed Ian Blackshaw 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.

4. Factual Background

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. Recently evaluated at more than USD 1 billion, the success and notoriety of the Complainant are supported by various press articles, copies of which have been provided to the Panel.

The Complainant operates its activities under several trademarks including, in particular, the numerous BITFURY word trademarks registered throughout the world:

European Union trademark No. 012966958 filed on June 11, 2014 and registered on December 8, 2014 (classes No. 9,35,36,42);

International trademark No. 1238905 registered in Australia, China, India, Japan, Korea, the Russian Federation, Singapore and United States of America on December 10, 2014 (classes No. 9,35,36,42).

International trademark No. 1242715 registered in Switzerland, Colombia, Georgia, Israel, Kazakhstan, Mexico, Norway, New Zealand, Turkey, Ukraine and Iceland on January 28, 2015 (classes No. 9,35,36,42);

Evidence of all these registrations has been provided to the Panel.

The Complainant’s above-mentioned BITFURY trademarks were all filed and registered several years before the Respondent registered the disputed domain name on March 15, 2019.

The cryptocurrency mining software and related hardware products bearing the trademarks of the Complainant, are sold throughout the world exclusively through the website “www.bitfury.com”, operated by a Dutch company, Bitfury Holding B.V.

Bitfury Holding B.V. is a fully owned subsidiary of Bitfury (Luxembourg) S.A.R.L and Bitfury (Luxembourg) S.A.R.L is a fully owned subsidiary of the Complainant.

The Complainant is also a fully owned English subsidiary of Bitfury Holding B.V., dedicated to specific activities and administrative support to the Bitfury group.

The Complainant is the owner of the <bitfury.com> official domain name registered on September 21, 2004.

The disputed domain name was registered on March 15, 2019 and resolves to a website that purports to offer investment and mining services within the cryptocurrency sector.

Evidence of all these matters has also been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the sole owner of the above-mentioned BITFURY word trademarks, and the public has come to associate such trademarks exclusively with the services and products marketed by the Complainant and its subsidiaries operating under the same name.

The Respondent registered the disputed domain name on March 15, 2019.

The website accessible under the disputed domain name (hereafter the Litigious Website) is a fraudulent website which pretends to have an address at “1st Floor One Canada Square, Canary Wharf London El 4 5AB, United Kingdom” which is precisely the former address of the London office of the Complainant, as shown on the archived pages dated May 2018 of the official Complainant’s website, evidence provided to the Panel.

This mention constitutes a clear identity theft as the Litigious Website is not related to the Complainant nor to any of its subsidiaries (such as Bitfury Holding B.V.) and/or its affiliates.

In order to defraud and mislead users of the Litigious Website, the Respondent presents itself just in a few lines as a worldwide company, misleading customers into thinking it is a trustworthy player in the cryptocurrencies industry while it is not:

“START BITCOIN MINING TODAY! Join over 2.000.000 people with the world’s leading hashpower provider.”

“BitFurylnvestment is an efficient digital currency mining pool, aiming to provide easy­ to-use functionalities, extraordinary security and stability, superb service, generous and transparent profits for our clients from all over the world. BitFurylnvestment supports mining services of 10 coins, including Bitcoin, Litecoin and Ethereum and supports 4 payment methods-PPS, PPS+, PPLNS and SOLO.”

The Litigious Website has been operating its illegal activities in violation of the Complainant’s rights on the above trademarks and other related intellectual property rights owned either by the Complainant (trademarks, corporate and trade name as well as domain name), Bitfury UK Limited (corporate and trade name) or by Bitfury Holding B.V. (corporate and trade name).

Indeed, the Respondent offers identical or at least highly similar services to those registered under the BITFURY trademarks of the Complainant, in particular in class 35 (“Data processing; Data transcription; Automated data processing; Collection of data”) and in class 36 (“Financial services; Facilitation of financial transactions using unconventional currency systems and bartering; Facilitation of cryptocurrency transactions”).

The services offered by the Respondent are also the same as the activities operated by Bitfury UK Limited or by Bitfury Holding B.V. under the BITFURY corporate and trade names as well as domain name.

In accordance with the Rules, Paragraph 3(b)(ix)(i), it is indicated that the disputed domain name registered on March 15, 2019 is confusingly similar to the earlier BITFURY trademarks, corporate and trade names.

The adding of the word “investment” to the mark BITFURY does not confer the requisite and sufficient distinctiveness to the disputed domain name to avoid user confusion.

It is very well-established, under numerous UDRP precedents, that a minor variation to a mark is insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion.

In the present case, the Respondent’s addition of the descriptive term “investment”of theBITFURY mark clearly results in such a minor variation.

This solution has been held by the Center in recent other UDRP cases involving the Complainant itself and its above-mentioned BITFURY trademarks against disputed domain names <bitfury.shop> and <bitfurynetwork.com>, which were transferred to the Complainant: see Bitfury Group Limited v. Maxim I Fedoseev, WIPO Case No. D2018-0654; Bitfury Group Limited v. WhoisGuard Protected, WhoisGuard Inc, I Samson Olaleye, WIPO Case No. D2018-2056.

This solution has also been held by the Center in numerous earlier UDRP decisions: see in particular Travellers Exchange Corporation Limited v. WhoisGuard, Inc. I Lord Oxford, WIPO Case No. D2018-1523 and earlier decisions: Calvin Klein Trademark Trust and Calvin Klein Inc. v. Abeer Ayoub, WIPO Case No. D2018-0387; SAP SE v. Lakshmi Reddy Bhumireddy and P. Hareesh, WIPO Case No. D2017-0396; Compagnie Générale des Etablissements Michelin v. Cameron Jackson, WIPO Case No. D2016-2392; Kumfs Brand Limited v. George, WIPO Case No. D2016-1272; Dubizzle Limited BVl v. Rana Anabtawi, WIPO Case No. D2016-0843; and Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domains By Proxy, LLC I Phupinder Gill, WIPO Case No. D2015-1842.

Therefore, the Panel shall consider that the disputed domain name is confusingly similar to the earlier BITFURY trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

In accordance with the Rules, Paragraph 3(b)(ix)(2), the Respondent has no rights or legitimate interest in the disputed domain name as the Respondent does not own any BITFURY trademarks and is not commonly known by the disputed domain name. The Respondent is not identified, nor its products or services are identified by a BITFURY trademark.

The Respondent has no rights in any of the BITFURY trademarks.

The Respondent does not own any of the BITFURY trademarks.

This situation is reflected by the following trademark offices:

- European Union Intellectual Property Office (“EUIPO”)and;

- The World Intellectual Property Organization (“WIPO”).

A keyword search with “Bitfury” on the TM View and WIPO databases show that there are no other registered BITFURY trademarks but the ones owned by the Complainant, evidence provided to the Panel.

Finally, the Respondent has not been licensed, contracted or granted authorization by the Complainant (or any other company belonging to the same group of companies) to register and/or use the BITFURY trademarks as a domain name.

Thus, there is no reason for the Respondent to justify choosing the word “bitfury” or “bitfuryinvestment” in its business operation.

The Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name relates to a Litigious Website that pretends to offer investment and “mining” services within the cryptocurrency sector of activity of the Complainant by using the tagline “START BITCOIN MINING TODAY!”evidence provided to the Panel.

This situation clearly leads consumers to believe that the Litigious Website is a website operated by Complainant or its affiliates or at least that the Complainant or its affiliates have authorized such a website to be operated by the Respondent.

This is clearly confirmed by the following email sent to the Complainant by a client regarding the Litigious Website:

“Hello
I want to know this site www.bitfu ryinvestment.com is related to your company and can I trust it to invest?
Is […] your employee?

Thank you for your help.”

Thus, the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.

Therefore, the Panel will find that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

In accordance with the Rules, Paragraph 3(b)(ix)(3), the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered in bad faith.

As indicated above, the Respondent was fully aware of the Complainant’s prior rights and registered the disputed domain name for the sole purpose of attracting the Complainant’s potential customers, misleading them to its Litigious Website. This is confirmed by the fact that the Litigious Website pretends to having an address at “1st Floor One Canada Square, Canary Wharf London El 4 5AB, United Kingdom”which is precisely the former address of the London office of the Complainant as shown on the archived pages dated May 2018 of the official Complainant’s website, evidence provided to the Panel.

Accordingly, the Respondent intends to mislead the customers by having registered the disputed domain name and having mentioned (but not updated) the same address as the former address of the Complainant. This registration was made in order to operate a Litigious Website that clearly infringes any and all trademarks and other intellectual property related rights (trademarks, corporate name, trade name, domain name) of the Complainant (as well as the corporate and trade name of Bitfury UK Limited and other companies of the same name belonging to the same group).

The disputed domain name is used in bad faith.

As stated in the previous section, the Respondent was fully aware of the Complainant’s prior existing BITFURY trademarks at the date of the registration of the disputed domain name.

The reproduction and use of the BITFURY word trademarks are meant:

(i) to make the users believe that the Litigious Website is operated by the Complainant or is affiliated to the Complainant or one of its subsidiaries and;

(ii) ultimately, to defraud and mislead users by offering them fraudulent cryptocurrency mining services and being paid for it.

Accordingly, the use of the disputed domain name is marked by particular bad faith.

This solution has been held by the Center in other recent UDRP cases involving the Complainant itself and its above-mentioned BITFURY trademarks against the disputed domain names of <bitfury.shop> and <bitfurynetwork.com> which were transferred to the Complainant: see Bitfury Group Limited v. Maxim I Fedoseev, WIPO Case No. D2018-0654); Bitfury Group Limited v. WhoisGuard Protected, WhoisGuard Inc, I Samson Ola/eye, WIPO Case No. D2018-2056).

This solution has also been held in numerous earlier UDRP decisions involving scam / fraudulent activities under disputed domain names:

Chopard International SA v. Vladimit Kozlov, WIPO Case No. D2007-1544;

Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; The prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561; and 8848 Altitude AB v. Constance Siddiqui, WIPO Case No. D2017-2001.

As a consequence, the Panel will find that the Respondent’s decision to register the disputed domain name and the circumstances of use thereafter show the Respondent’s bad faith.

B. Respondent

The Respondent, has been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions was based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See the Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s BITFURY registered trademarks and this makes the disputed domain name confusingly similar to the Complainant’s well-known BITFURY registered trademarks.

The Panel agrees with the Complainant’s contention that the inclusion of the word “investment” in the disputed domain name is irrelevant and does not have the effect of avoiding any confusing similarity. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066. See also Osram Sylvania, Inc. v. Jason Blevins, WIPO Case No. D2009-0233.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known BITFURY registered trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:

- whether there is any evidence of the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute;

- whether the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known BITFURY registered trademarks. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known BITFURY registered trademarks, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services and products.

Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well‑known BITFURY registered trademarks and the valuable goodwill that the Complainant has established in those trademarks through prior commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services; on the contrary, as mentioned above by the Complainant, the disputed domain name relates to a website that pretends to offer investment and “mining” services within the cryptocurrency sector of activity of the Complainant by using the tagline “START BITCOIN MINING TODAY!”.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative.

See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating the Complainant’s well-known BITFURY registered trademarks, is trading unfairly on the Complainant’s valuable goodwill established in such trademarks.

The nature of the disputed domain name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its services and products marketed under its well-known BITFURY registered trademarks.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its business activity, as well as its well-known BITFURY registered trademarks and their prior commercial use.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions and the previous UDRP cases cited, as set out above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <bitfuryinvestment.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: July 25, 2019