HDR Global Trading Limited v. park seung chul
Claim Number: FA1905001843184
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona. Respondent is park seung chul (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexbitcoin.com>, registered with Gabia, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2019; the Forum received payment on May 14, 2019. The Complaint was received in both Korean and English.
On May 16, 2019, Gabia, Inc. confirmed by e-mail to the Forum that the <bitmexbitcoin.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 24, 2019, the Forum served both the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of June 13, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bitmexbitcoin.com. Also on May 24, 2019, the Korean Language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Korean language, thereby making the language of the proceedings Korean. The Panel has reviewed the applicable rules on language of the proceedings under the UDRP. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, HDR Global Trading Limited, is crypto-currency based virtual trading platform. Complainant has rights in the BITMEX mark through its registration with the European Union Intellectual Property Office (e.g., Reg. No. 16,462,327 registered on Aug. 11, 2017). See Amend. Compl. Annex 1. Complainant also registered the BITMEX mark with the Korean Intellectual Property Officer (e.g. Reg. No. 40-1463637-0000 registered on March 26, 2019). See Amend. Compl. Annex 5. Respondent’s <bitmexbitcoin.com> domain name is confusingly similar to Complainant’s mark because it incorporates the BITMEX mark in its entirety, adding only the descriptive term “bitcoin” along with a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bitmexbitcoin.com> domain name because Respondent is not commonly known by the disputed domain name and Respondent is not sponsored by or affiliated with Complainant in any way and Complainant has not authorized or licensed Respondent to use Complainant’s mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to direct Internet users to an inactive website. See Amend. Compl. Annex 8.
Respondent registered and uses the <bitmexbitcoin.com> domain name in bad faith because Respondent uses the disputed domain name to direct users to an inactive webpage. See Amend. Compl. Annex 8. Further, Respondent had constructive knowledge of Complainant’s mark and is attempting to capitalize off the goodwill associated with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Seychelles company that operates a crypto-currency based virtual trading platform.
2. Complainant has rights in the BITMEX mark through its registration with the European Union Intellectual Property Office (e.g., Reg. No. 16,462,327 registered on Aug. 11, 2017).
3. Respondent registered the <bitmexbitcoin.com> domain name on July 23, 2018.
4. Respondent uses the disputed domain name to direct Internet users to an inactive website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BITMEX mark based upon its registration of the mark with the EUIPO. Registration with the EUIPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Wente Bros. v. I S / ICS INC, FA 1739664 (Forum Aug. 18, 2017) (finding the complainant’s registration of its WENTE and WENTE VINYARDS marks with the EUIPO sufficient to establish rights in the marks). Complainant provides copies of its registration of the mark with the EUIPO (e.g., Reg. No. 16,462,327 registered on Aug. 11, 2017). See Amend. Compl. Annex 1. Accordingly, the Panel agrees and finds that Complainant has established rights in the BITMEX mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITMEX mark. Furthermore, Complainant argues that Respondent’s <bitmexbitcoin.com> domain name is confusingly similar because Respondent incorporates the BITMEX mark in its entirety, adding a descriptive term and a gTLD. The addition of a descriptive term and gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant argues that Respondent incorporates the BITMEX mark in its entirety, adding a gTLD and the term “bitcoin” which is descriptive of services offered by Complainant. Therefore, the Panel finds that the <bitmexbitcoin.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BITMEX trademark and to use it in its domain name, adding the term “bitcoin” which is descriptive of services offered and which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <bitmexbitcoin.com> domain name on July 23, 2018;
(c) Respondent uses the disputed domain name to direct Internet users to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <bitmexbitcoin.com> domain name because Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “park seung chul” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Annex 7. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <bitmexbitcoin.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <bitmexbitcoin.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to host an inactive webpage. Using a disputed domain name as a passive holding may not be a bona fide offering or a legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a declaration in which a Mr. Ashcraft states that he observed the disputed domain name’s resolving webpage as inactive before April 29, 2019. See Amend. Compl. Annex 11. Complainant further provides a screen shot of the resolving webpage which is in Korean. See Amend. Compl. Annex 11. Ex. A. As the Panel finds the evidence sufficient, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that while Complainant makes no arguments that would fall under Policy ¶ 4(b), such arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Thus, the Panel finds Complainant’s Policy ¶ 4(a)(iii) submissions are sufficient to demonstrate bad faith.
Complainant argues that Respondent registered and uses the <bitmexbitcoin.com> domain name in bad faith because the disputed domain name resolves to an inactive webpage. Such use may evince bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Complainant argues that Respondent is making no active use of the disputed domain name. Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to display construction clipart. See Amend. Compl. Annex 8. As the Panel finds the evidence sufficient, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent had constructive knowledge of Complainant’s BITMEX mark and attempts to trade off the goodwill and success of Complainant’s mark in the cryptocurrency market. While constructive notice is not a ground for a finding of bad faith, actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through the fame of the mark and a respondent’s use of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues that the BITMEX mark is so intrinsically linked to Complainant that Respondent’s registration of the disputed domain name alone is evidence of bad faith. As the Panel finds the evidence sufficient, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BITMEX mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexbitcoin.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Neil Anthony Brown, Q.C., Panelist
Dated: June 19, 2019
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