Cryptocurrencies (such as Bitcoin) are all the rage -- so, naturally, related domain name disputes are, too.
The wild fluctuations in cryptocurrency prices (Bitcoin hit a low of close to $6,000 this week, after reaching an all-time high of more than $19,000 only two months ago, and less than $1,000 a year ago) have attracted speculators, regulators and now even cybersquatters.
Bitcoin + Trademark Domain Names
About 16 cases involving domain names with the word "Bitcoin" have been filed as of this writing under the Uniform Domain Name Dispute Resolution Policy (UDRP). Each of the disputed domain names contains what appears to be a well-known trademark in addition to the word "Bitcoin," such as <morganstanleybitcoin.com>, <tdbankbitcoin.com>, and <capitalonebitcoin.com> (each of which was ordered transferred to the obvious trademark owner).
These multi-word cryptocurrency domain name disputes arose not because they contain "Bitcoin" but because they contain another entity's trademark. Indeed, it appears as if the word "Bitcoin" itself is not protected by any trademark registrations in the United States, although there are more than a dozen U.S. trademark registrations that include "Bitcoin," such as AMERICAN BITCOIN EXCHANGE (U.S. Reg. No. 4,665,053) and BITCOIN.GURU (U.S. Reg. No. 5,129,377).
So, it seems unlikely that anyone could successfully assert rights to a domain name based only on the word "Bitcoin," and inclusion of another word may be essential to win a UDRP dispute. For example, in a UDRP decision transferring the domain name <valium4bitcoins.com> to the drug company F. Hoffmann-La Roche, the panel wrote that the "dominant part of the disputed domain name" contained the trademark VALIUM and that the presence of the word "Bitcoin" in the domain name "does not affect the overall impression" of it.
And in a UDRP decision ordering transfer of three domain names including <bitcoincitadelinvestment.com>, the panel said that the word "Bitcoin" was simply a "generic financial term[]" that did not affect the UDRP's "confusingly similar" factor.
Interestingly, at least as of this writing, no UDRP complaints have been filed for domain names containing the names of some of Bitcoin's cryptocurrency competitors, such as Litecoin. That could simply be an indication of Bitcoin's dominance and, I suspect, is likely to change in the near future.
However, one company, Bittrex, which operates a cryptocurrency exchange, has been quite active in filing UDRP complaints for domain names that contain its BITTREX trademark, winning 23 decisions as of this writing, including for <bittrex.exchange>.
Why Cryptocurrency Domain Names?
Cybersquatters appear to be attracted to Bitcoin-related domain names at least in part to profit from questionable practices. For example, in the <valium4bitcoins.com> case, the panel wrote that the domain name "resolve[d] to a website offering generic products identical to Complainant’s Valium products, and which are sold under Complainant’s VALIUM trademark" -- something the panel said created a likelihood of confusion and, therefore, bad faith under the UDRP's third element.
In the <morganstanleybitcoin.com> case (which also involved four other domain names), the panel applied the UDRP's "passive holding" doctrine to find bad faith even though the domain names were not associated with active websites. "Using a confusingly similar domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant shows bad faith..., even when a respondent does not actively use the domain names," the panel wrote.
Cybersquatters are not the only registrants of Bitcoin-related domain names, which also have attracted domainers interested in profiting from the fascination of cryptocurrency without treading on the rights of any trademark owners. Recently for example, one domain name blogger wrote that "cryptocurrency-related domain names have been big sellers."
If Bitcoin and other cryptocurrencies continue to attract traders and media attention, I'm sure more related UDRP complaints are coming.
