HDR Global Trading Limited v. Glynipher Co
Claim Number: FA1908001855609
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona, USA. Respondent is Glynipher Co (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joinbitmex.com> registered with NameSilo, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2019; the Forum received payment on August 2, 2019.
On August 7, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <joinbitmex.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 August 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@joinbitmex.com. Also on August 8, 2019, the 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 August 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant, HDR Global Trading Limited, is crypto-currency based virtual trading platform. Complainant has rights in the trademark BITMEX through its registration with the European Union Intellectual Property Office (“EUIPO”) dated Aug. 11, 2017, the United States Patent and Trademark Office (“USPTO”), and the Philippines Trademark Office. Respondent’s <joinbitmex.com> domain name, registered on May 17, 2018, is confusingly similar to Complainant’s mark because it incorporates the BITMEX mark in its entirety, adding only the word “join” along with a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <joinbitmex.com>
domain name because Respondent is not commonly known by the disputed domain
name and is not authorized or permitted to use Complainant’s mark in any
fashion. Additionally, Respondent fails to use the disputed domain names in
connection to a bona fide offering of goods or services or a legitimate
noncommercial or fair use. Rather, Respondent used the disputed domain name to
redirect Internet users to a third party website that also offers virtual
currency related services. After Complainant sent a demand letter to
Respondent, the disputed domain name resolution changed so that it redirected
users to Complainant’s own website at www.bitmex.com. The disputed domain name
currently resolves to an inactive webpage.
Respondent registered and uses the <joinbitmex.com> domain name in bad faith because Respondent uses the disputed domain name to host an inactive webpage. Further, Respondent had actual and 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) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant claims rights in the BITMEX mark based upon registration of the mark with the EUIPO, the USPTO, and the Philippines Trademark Office. Registration of a mark with such government agencies is sufficient to establish rights in that mark. See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”) The Panel therefore holds that Complainant’s registration of the BITMEX mark with the EUIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <joinbitmex.com> domain name is confusingly similar to the BITMEX mark, as the name incorporates the mark in its entirety along with the generic term “join” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The Panel therefore determines that the <joinbitmex.com> domain name is confusingly similar to the BITMEX mark per Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <joinbitmex.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the mark in any way. It is well established that the WHOIS record can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record here identifies the registrant of the disputed domain name as “Glynipher Co,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <joinbitmex.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <joinbitmex.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent previously used the disputed domain name to automatically redirect to a third-party virtual currency website and then to Complainant’s own website. Use of a domain name to commercially benefit via redirection is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See The Endurance International Group, Inc. and its companies, Bluehost Inc. and Hostgator.com, LLC v. Administrator Dom / Muscari Holding Limited, FA 1684069 (Forum Aug. 25, 2016) (finding that respondent’s registering of domain names which “redirect Internet users to Complainant’s own website” directly violated the affiliate agreement between the parties); see also FORCE Customs, Inc. v. darren vivolo / coast 2 coast charters, FA 1848305 (Forum Aug. 6, 2019) (“the resolving webpage … appears to redirect users to <bayshoreautomotive.com>, a website soliciting used cars. The Panel here finds that Respondent’s use of the disputed domain name to resolve to a competitor is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”) Complainant provides screenshots[i] (first dated March 28, 2019) in which the disputed domain name resolved to the <bitcoinlifestyle.com> domain name’s website. Moreover, as of May 17, 2019, the disputed domain name purportedly redirected users to Complainant’s own <bitmex.com> domain name’s website. As the <joinbitmex.com> domain name redirected users to a competitive and commercial third-party site and then to Complainant’s own website, the Panel finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts that Respondent’s current inactive holding of the <joinbitmex.com> domain name indicates that it does not have rights or legitimate interests in the name. In most cases inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not currently resolve to an active webpage. The Panel therefore finds that this provides further support for the conclusion that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the fame and notoriety of Complainant's BITMEX mark, it is inconceivable that Respondent could have registered the <joinbitmex.com> domain name without actual or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant here as UDRP case precedent declines to find bad faith as a result of constructive knowledge except under very specific circumstances where the respondent is subject to the legal framework of a jurisdiction in which common law rights are recognized. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.") Here, the Respondent appears to be located in the Philippines and Complainant does not provide any evidence of its actual use of the BITMEX mark in that jurisdiction nor does it cite any authority to support application of the common law principle of constructive knowledge of trademark rights. Further, despite Complainant’s statements that it “has become one of the most recognizable names in the cryptocurrency field” and “Complainant's BITMEX Marks are celebrated internationally, evidenced by their popularity [and] success”, Complainant submits no supporting evidence. While trademark registrations supply proof that trademark rights exist, they do not indicate the popularity, fame, or reputation of the protected mark.
However, the Panel does agree with Complainant that it is highly likely that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge of a mark is adequate evidence upon which to build a case for bad faith under Policy ¶ 4(a)(iii). 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.”) Here, the disputed domain name’s above-mentioned function of redirecting to virtual currency websites that are in the same line of business as Complainant strongly indicates that Respondent knew of the BITMEX trademark. As there is no Response or other submission to contest Complainant’s prima facie case, the Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark.
Next, Complainant asserts that Respondent’s failure to use the <joinbitmex.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) The Panel notes Complainant’s contention and submitted evidence that the disputed domain name does not currently resolve to an active website. In the absence of any Response or other explanation for such inactivity by the Respondent, the Panel finds that this inactive holding of the domain name is evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant further submits into evidence two demand letters that were sent, via email and post, to the Respondent raising this dispute between the BITMEX mark and the <joinbitmex.com> domain name. Complainant received no reply to either of its letters. A respondent’s failure to engage with a dispute can, after taking into account all the circumstances of a case, lend support to a claim of bad faith. See Bloomberg Finance L.P. v. Usman Ik / Divers Marine Contracting LLC, FA 1820452 (Forum Jan. 10, 2019) (“Respondent did not reply or respond in any way to this [demand letter] communication. Again, in light of the nonexclusive nature of Policy ¶ 4(b), failure to respond to a cease and desist notice has been held to support a finding of bad faith.”), citing Fareportal, Inc. v. Arun Meelyan, FA 1736954 (Forum Aug 17, 2017) and Seiko Epson Corporation v. Asish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a demand letter has been found to constitute bad faith).
Finally, the Panel notes that, despite providing supporting facts and evidence, Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the Panel notes that these 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). As such, the Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <joinbitmex.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 30, 2019
[i] These screenshots are rather grainy and difficult to read but it is at least clear that they are of the claimed websites.
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