WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bitrise Limited and Bitrise Inc v. BitRise Network, David Koeman, Lora Mutner, 石磊 (Lei Shi), Emmanuel Ewusi, Leland Li and Danny Harris

Case No. D2021-4051

1. The Parties

The Complainants are Bitrise Limited (“First Complainant”), United Kingdom; and Bitrise Inc (“Second Complainant”), United States of America (“United States”), represented by Withers LLP, United Kingdom.

The Respondents are BitRise Network, United States; David Koeman, Nigeria; Lora Mutner, United States; 石磊 (Lei Shi), China; Emmanuel Ewusi, Germany; Leland Li, China; and Danny Harris, United States.

2. The Domain Names and Registrars

The disputed domain name <bitrise.app> is registered with Porkbun LLC. The disputed domain names <bitriseaudits.com>, <bitrisecharity.org>, <bitrise.finance>, <bitrisetoken.com> and <bitrisewallet.com> are registered with NameCheap, Inc. The disputed domain names <bitrisepro.com> and <bitrisetoken.org> are registered with GoDaddy.com, LLC. The disputed domain names <bitrisetokenauth.site> and <bitrisetoken.site> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <bitrisetoken-promogive.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. The disputed domain name <bitrisewalet.com> is registered with Cloud Yuqu LLC.

Porkbun LLC; NameCheap, Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; Hosting Concepts B.V. d/b/a Registrar.eu; and Cloud Yuqu LLC are separately and collectively referred to below as “the Registrar”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6 and 7, 2021, the Registrar transmitted by email to the Center verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on December 14, 2021.

On December 26, 2021, the Center transmitted an email communication to the Parties in Chinese, English and Japanese regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 Respondents in Chinese, English and Japanese of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Center received communications from certain Respondents by email on December 14, 2021, January 12, 13 and 14, 2022, and February 15, 2022.

The proceeding was suspended on January 28, 2022 at the request of the Complainants in order to pursue settlement discussions. On February 9, 2022, the proceeding was partially dismissed regarding eight domain names and reinstituted regarding the 12 disputed domain names set out in Section 2 above at the request of the Complainants with a new Response due date as February 14, 2022. On February 15, 2022, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 24, 2022. 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 Complainants are part of a corporate group founded in 2014. They own and operate a continuous integration and delivery “software as a service” platform used to build, develop and maintain mobile applications. They both offer their services under the Bitrise name. They assist their customers with over two million software builds per month, including in the financial technology sector, and their business has received significant press coverage, including online. The Complainants own trademark registrations for BITRISE. Specifically, the First Complainant holds European Union Trade Mark registration number 016913352, registered on October 24, 2017, specifying goods and services in classes 9, 38 and 42; while the Second Complainant holds United States trademark registration number 6,100,199, registered on July 14, 2020 with a claim of first use in commerce on October 24, 2014, specifying services in class 42. Both these trademark registrations remain current. The Complainants use the domain name <bitrise.io>, registered on July 9, 2014, in connection with a website where they provide information about their services, including work for non-profit organizations such as charities.

The Respondents are named in the Registrar’s WhoIs database as an entity identified as “BitRise Network”, located in the United States, and as six individuals resident at other locations in China, Germany, Nigeria and the United States. BitRise Network is described on its websites as a “crypto engineering firm”, offering products including a Bitrise token (“Brise”), Bitrise wallet (a non-custodial cryptocurrency wallet) and Bitrise audits (allegedly security assessments of source code). According to an announcement made on the Bitrise token Twitter account on December 14, 2021 (i.e., the day on which the Complainant filed the amended Complaint naming the Respondents), the Bitrise cryptocurrency project has been rebranded as “Bitgert”, although the symbol Brise remains the same.

The disputed domain names were registered on the dates and by the registrants shown below:

According to the evidence on record, the disputed domain names registered by BitRise Network have been used as follows:

- <bitrisetoken.com> formerly resolved to a website offering Bitrise tokens for sale and displaying the Brise logo. It now redirects to a similar webpage on a site associated with <bitgert.com>;

- <bitrisewallet.com> formerly resolved to a webpage displaying a hyperlink to download the Bitrise crypto wallet mobile application, and displaying the Brise logo. It now redirects to a similar webpage on a site associated with <bitgert.com>;

- <bitriseaudits.com> formerly resolved to a webpage displaying the market price for the Bitrise token, a “project audit leader board” and the Brise logo. It now redirects to a similar webpage on a site associated with <bitgert.com>;

- <bitrise.finance> formerly resolved to a webpage titled “Stake Bitrise” announcing the forthcoming launch of Bitrise Finance and displayed a hyperlink to the disputed domain name <bitrisetoken.com>. It now redirects to “https://staking.bitgert.com/”, which does not resolve to any active website; rather, it is passively held; and

- <bitrisecharity.org> resolves to a webpage for the Bitrise Charity Foundation that displays images and text regarding charitable causes, a button to make donations, and “Bitrise Token” in a copyright notice.

According to evidence of cached webpages presented by the Complainant, the disputed domain names registered by David Koeman and Lora Mutner have been used as follows:

- <bitrisetokenauth.site> formerly resolved to a website promoting Brise that claimed to be operated by the developer of that token. It is now passively held;

- <bitrisetoken-promogive.com> formerly resolved to a website offering a promotional giveaway of Bitrise tokens that prominently displayed the Brise logo. It is now passively held; and

- <bitrisetoken.site> does not appear to have ever resolved to an active website.

The disputed domain names registered by other registrants are used as follows ¹ :

- <bitrise.app> resolves to a broker’s webpage advertising it for sale;

- <bitrisepro.com> resolves to a registrar’s webpage displaying pay-per-click (“PPC”) links for cloud services and a hyperlink for Internet users wishing to acquire this disputed domain name;

- <bitrisetoken.org> resolves to a different broker’s webpage offering it for sale; and

- <bitrisewalet.com> resolves to a webpage displaying PPC links for Bitcoin and Bitcoin wallets.

The evidence on record includes multiple complaints from cryptocurrency investors posted on the Bitrise token Twitter account in November 2021, advising that they could not recover their Bitrise tokens or wallets and had lost their funds. Bitrise Network’s contact details were limited to online forms, email addresses associated with the disputed domain names, and social media accounts. According to evidence provided by the Complainants, including an extract of source code, the website associated with <bitrisecharity.org> is actually scraping the third party charity website at “www.puregiven.com” to seek donations.

The evidence on record also includes examples of actual confusion between the Complainants and the Bitrise cryptocurrency project, including customers who contacted the Complainants to complain or seek information about Brise, and online publications that confused the two.

5. Parties’ Contentions

A. Complainants

The disputed domain names are identical or confusingly similar to the Complainants’ BITRISE trademark.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents do not have any trademark applications or registrations for the term “Bitrise”. The disputed domain names (and the mobile application that users can download from one associated website) are not being used for legitimate purposes. Evidence suggests that the Respondents are operating a financial scam. The Respondents have not been commonly known by the disputed domain names and have not been commonly known as “Bitrise” prior to the Complainant’s own use of the term; nor has the Respondents made a legitimate noncommercial or fair use of the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The Respondents are operating a scam and/or encouraging consumers’ investment in their token and related products/services in order to initiate a “rug pull”.² The Respondents are misleading the public in its offering of large financial rewards for a user’s passive actions. The Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations (such as their social media platforms and mobile application), by creating a likelihood of confusion with the Complainants’ trademarks. Furthermore, the Respondents are seeking to take unfair advantage of, abuse and engage in behaviour that is detrimental to the Complainants’ trademarks.

B. Respondents

The Respondents BitRise Network, David Koeman, Lora Mutner, 石磊 (Lei Shi) and Danny Harris did not reply to the Complainants’ contentions.

The Respondent Leland Li submits that he is a domain investor and has registered a lot of domain names. Before registering the disputed domain name <bitrise.app>, he claims that he did not know that BITRISE was recognized by the public. He registered this disputed domain name and wants to sell it, that is all. He denied that he is infringing and submits that he will not use this disputed domain name. He confirmed that other Respondents agreed to settle but he did not. He confirms that the disputed domain name <bitrise.app> is for sale. He asks the Complainant, if it wants this disputed domain name, to pay for it.

The Respondent Emmanuel Ewusi questions why this administrative proceeding is necessary for a disputed domain name that he bought legally. He offers to transfer the disputed domain name <bitrisetoken.org>. He does not consider it worth fighting this dispute.

6. Discussion and Findings

6.1 Procedural Issues

A. Consolidation: Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group and each of them owns a trademark registration for BITRISE. The Panel finds that the Complainants have a common grievance against the disputed domain name registrants and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Consolidation: Multiple Domain Name Registrants

The amended Complaint initiates disputes in relation to seven nominally different domain name registrants. The Complainant alleges that the disputed domain name registrants are not a single entity, arguing that the word “network” in one registrant’s name indicates that there is more than one party involved and that there are numerous quasi-independent operators involved acting in a geographically dispersed manner. The Complainant points out similarities between the websites associated with the disputed domain names registered by BitRise Network, cached versions of websites formerly associated with two disputed domain names registered by David Koeman and Lora Mutner, the trademark in each disputed domain name, conceptual similarities between the words in various disputed domain names and the Bitrise wallet mobile application, and the fact that the contact addresses of three registrants are in California, United States.

The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) of the Rules was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether: (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel notes that five disputed domain names are registered by the same registrant, i.e., BitRise Network, and that four of these are associated with websites for its Bitrise token. Two other disputed domain names, although nominally registered by David Koeman and Lora Mutner, formerly resolved to websites operated by the provider of the Bitrise token, one of which prominently displayed the same Bitrise token logo. Another disputed domain name is also registered in the name of David Koeman. In these circumstances, the Panel is persuaded that the eight disputed domain names registered in the names of these three registrants are under common control.

However, the Panel does not find a sufficient basis in the record to infer that the other four disputed domain names are under common control with the first eight. It is true that all 12 domain names were registered within a relatively short period of four months and that these other four disputed domain names incorporate the same trademark as the first eight, plus another word in two cases (“token” or a misspelt “walet”). However, the available data regarding the disputed domain names registered by Danny Harris, Leland Li, 石磊 (Lei Shi), and Emmanuel Ewusi, including their registration details and the uses to which they are put, indicates that they may well be opportunistic registrations by different persons acting independently of each other. Moreover, two of these registrants sent informal responses to notices received from the Center in the course of this proceeding, while another, 石磊 (Lei Shi), has been a respondent in multiple proceedings under the Policy but none of them involved any of the other named registrants in this dispute.³ In these circumstances, the Panel is not satisfied that, on the balance of probabilities, these four domain names are under common control with the first eight.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes regarding BitRise Network, David Koeman, and Lora Mutner would be unfair or inequitable to any Party.

Accordingly, the Panel will decide the Complaint regarding the disputed domain names <bitrise.finance>, <bitriseaudits.com>, <bitrisecharity.org>, <bitrisetoken.com>, <bitrisetoken.site>, <bitrisetokenauth.site>, <bitrisetoken-promogive.com> and <bitrisewallet.com> (referred to below as the “disputed domain names”), registered in the names of BitRise Network, David Koeman and Lora Mutner (separately and collectively referred to below as the “Respondent”). On the other hand, the Panel declines to consolidate the disputes regarding the domain names <bitrise.app>, <bitrisepro.com>, <bitrisetoken.org>, and <bitrisewalet.com>. This decision is made without prejudice to the possibility of refiling complaints regarding these four domain names.

C. Language of the Proceeding

The Registrar confirmed that the Registration Agreements for the eight remaining disputed domain names are all in English.⁴ The Panel notes that the Complaint and amended Complaint were submitted in English, the websites associated with the disputed domain names are in English, and the Respondent did not file a response. Therefore, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the BITRISE mark.

The disputed domain name <bitrise.finance> incorporates the BITRISE mark as its operative element.

The other seven disputed domain names incorporate the BITRISE mark as their respective initial elements. Each of them adds a word or abbreviation, variously “audits”, “auth” (short for “authorization”), “charity”, “token”, “wallet”, and, in one case, a hyphen followed by “promo” and “give” (short for “promotional giveaway”). Given that the BITRISE mark remains clearly recognizable in all these disputed domain names, the addition of these words and abbreviations does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview 3.0, section 1.8.

All eight disputed domain names also include a generic Top‑Level Domain (“gTLD”) suffix (variously “.com”, “.site”, “.finance”, or “.org”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [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; or

(ii) [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; or

(iii) [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.

As regards the first and third circumstances set out above, the disputed domain names <bitrisetoken.com>, <bitrisewallet.com> and <bitriseaudits.com> resolve to websites offering for sale Brise tokens, wallets and audits. The disputed domain name <bitrisecharity.org> resolves to a website scraping content from a third party website to seek donations. The disputed domain names <bitrise.finance>, <bitrisetokenauth.site> and <bitrisetoken-promogive.com> formerly resolved to websites promoting the Brise project and are now passively held. The disputed domain name <bitrisetoken.site> does not appear to have ever resolved to an active website. Nothing on the record indicates that the Respondent has acquired any trademark or service mark rights to the name “Bitrise”. It is clear from the amended Complaint that the Complainant has not authorized the Respondent to use its BITRISE mark in a domain name or any other way. In the Panel’s view, this evidence constitutes a prima facie case that the disputed domain names are not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

As regards the second circumstance, the Respondent’s names are listed in the Registrar’s WhoIs database as “BitRise Network”, “David Koeman”, and “Lora Mutner”, of which only the first resembles the disputed domain names. The evidence on the record does not establish that “BitRise Network” is an actual company or business name and its websites provide no physical or telephone contact details. According to the Bitrise token Twitter account, the Bitrise project founder is a sole individual, whose name is not identified on the associated websites or other online locations either. Although the evidence of actual consumer and media confusion shows that the Respondent’s project was formerly known as “Bitrise”, the Complainant has provided credible evidence to support its claim that the project is a scam. The Panel recalls that use of the disputed domain names in connection with scamming activities cannot ever confer legitimate rights or interests on a respondent. See WIPO Overview 3.0, section 2.13.1.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not respond to the Complaint, not even to the allegation that its project is a scam. Accordingly, it has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards registration, the disputed domain names were registered in 2021, after the registrations of the Complainant’s BITRISE trademark. All the disputed domain names wholly incorporate that exact mark as their operative element or respective initial elements. The mark is a coined word with no dictionary meaning. Moreover, the Complainant provides software for mobile application development, including in the financial technology sector, and the Respondent offers a mobile application for cryptocurrency. The Respondent offers no explanation for the registration of the disputed domain names. These circumstances give the Panel reason to find that the Respondent knew or should have known of the Complainant’s BITRISE mark at the time that it registered the disputed domain names.

As regards use, the disputed domain names <bitrisetoken.com>, <bitrisewallet.com> and <bitriseaudits.com> resolve to websites offering for sale Brise tokens, wallets and audits. The disputed domain name <bitrisecharity.org> resolves to a website associated with the Brise project that actually scrapes content from a third party website to seek donations. The disputed domain names <bitrise.finance>, <bitrisetokenauth.site> and <bitrisetoken-promogive.com> formerly resolved to websites promoting the Brise project. These uses are or were for commercial gain. The disputed domain names incorporate the Complainant’s BITRISE mark, which gives the false impression that they are operated or endorsed by, or affiliated with, the Complainant. The Panel considers that these seven disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s BITRISE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of products on those websites within the terms of paragraph 4(b)(iv) of the Policy. The Panel takes note that certain disputed domain names now redirect to “www.bitgert.com” where they resolve to similar webpages or no active webpage. These changes do not alter the Panel’s conclusions.

The Respondent appears to have only ever made passive use of the disputed domain name <bitrisetoken.site> but that circumstance does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has acquired a strong reputation in the BITRISE mark in connection with its mobile application development software through widespread use. This disputed domain name wholly incorporates the BITRISE mark as its initial element, like those disputed domain names that the Respondent actively uses, and its operational element is identical to that of <bitrisetoken.com> (considered above). In the Panel’s view, the most likely intended uses of this passively-held disputed domain name is the same as one or more of the actively-held disputed domain names, which are in bad faith. The Respondent provides no explanation of any other potential use of this disputed domain name. In all these circumstances, the Panel considers that the Respondent is also using this disputed domain name in bad faith.

Therefore, the Panel finds that all eight disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules:

(a) the Panel orders that the disputed domain names <bitrise.finance>, <bitriseaudits.com>, <bitrisecharity.org>, <bitrisetoken.com>, <bitrisetoken.site>, <bitrisetokenauth.site>, <bitrisetoken-promogive.com>, and <bitrisewallet.com> be transferred to the Complainant; and

(b) the Complaint is denied as regards the domain names <bitrise.app>, <bitrisepro.com>, <bitrisetoken.org>, and <bitrisewalet.com>.

Matthew Kennedy
Sole Panelist
Date: March 10, 2022

¹ The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched the publicly available webpages associated with these four disputed domain names in order to verify the uses to which they are put. The Panel considers this process of verification useful in assessing the request for consolidation of the disputes regarding these domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.

² A “rug pull” is a malicious maneuver in which a cryptocurrency developer abandons a project and runs away with investors’ funds.

³ The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched for panel decisions involving the respondents at “www.wipo.int/amc/en/domains/search/”, which are a matter of public record, to assess the Complainant’s assertion that they are quasi-independent. The Panel considers this process of verification useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8.

⁴ The Registrar confirmed that the Registration Agreement for the domain name <bitrisewalet.com> is in Chinese, but the Panel declines to decide the Complaint regarding that domain name for the reasons given in Section 6.1B supra.