HDR Global Trading Limited v. Min Seung
Claim Number: FA1909001864455
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Min Seung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexix.com>, registered with Whois Networks Co., Ltd..
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 September 27, 2019; the Forum received payment on September 27, 2019.
On October 3, 2019, Whois Networks Co., Ltd. confirmed by e-mail to the Forum that the <bitmexix.com> domain name is registered with Whois Networks Co., Ltd. and that Respondent is the current registrant of the name. Whois Networks Co., Ltd. has verified that Respondent is bound by the Whois Networks Co., Ltd. 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 October 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@bitmexix.com. Also on October 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 October 30, 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.
The Panel notes that the Registration Agreement is written in Korean, thereby making it the designated language of the proceedings. However, Complainant has submitted its Complaint in both the Korean and English languages. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the case. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). By submitting its Complaint in both English and Korean, and by the Respondent failing to participate in these proceedings, pursuant to UDRP Rule 11(a), the Panel determines that this case may proceed in the English language.
A. Complainant
Complainant owns and operates a leading and prominent cryptocurrency-based virtual trading platform marketed to millions of consumers around the world in five languages. Complainant has rights in the trademark BITMEX mark through its use in commerce since 2014 and its registration with multiple trademark agencies around the world dating back to 2017, including the Korean Trademark Agency (“KTA”), the United States Patent and Trademark Office (“USPTO”), and the European Trademark Office (“EUTM”). Respondent’s <bitmexix.com> domain name is confusingly similar to Complainant’s BITMEX mark. Respondent’s domain name contains the Complainant’s BITMEX mark in its entirety and adds the letters “ix” in addition to the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitmexix.com> domain name as Complainant has never authorized or licensed to Respondent any rights in the BITMEX mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that impersonates Complainant and uses exact language from certain of Complainant’s domains. The disputed domain name even redirects users to Complainant’s legitimate webpage.
Respondent used the <bitmexix.com> domain name in bad faith as the disputed domain name redirects users to Complainant’s legitimate <bitmex.com> domain name and purports to provide a discounted subscription service. Respondent also had actual knowledge of Complainant’s rights in the BITMEX mark prior to registration of the disputed domain name due to the mark being celebrated internationally, evidence by its popularity, success, and worldwide trademark rights. Further, the mark is misspelled as BITMAX in at least one appearance on Respondent’s website.
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 to have rights in the BITMEX mark through its registration with trademark agencies from around the globe including the KTA, the USPTO, and the EUTM. Registration of a mark with multiple trademark agencies is sufficient to establish rights therein per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant has provided the Panel with evidence of its trademark registrations for the BITMEX in various countries, including its registration with the Korean Trademark Agency. Therefore, the Panel finds that Complainant has adequately shown rights in the BITMEX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bitmexix.com> domain name is confusingly similar to Complainant’s BITMEX mark. Registration of a domain name that contains a mark in its entirety and adds additional letters and a gTLD does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”) Here, Complainant argues that Respondent’s domain name contains the Complainant’s BITMEX mark in its entirety and adds the letters “ix” in addition to the “.com” gTLD. The Panel therefore agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s 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 lacks rights or legitimate interest in the <bitmexix.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BITMEX mark or register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Min Seung” and there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the BITMEX mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name directs users to a website that copies content from Complainant’s own legitimate website and, in some way, redirects users to Complainant’s site. Use of a disputed domain name to redirect to a complainant’s own webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per 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). Here, Complainant provides screenshots of Respondent’s <bitmexix.com> domain name but they are rather grainy and difficult to read. In addition, the exhibits are somewhat confusing and it is not clear whether Complainant has submitted a copy of its own website (e.g., the screenshots do not include any address bars and it is not clear from the language of Complainant’s demand letter to Respondent which, if any, of the attached screenshots are of Complainant’s own website). As such, the Panel cannot determine if the Respondent’s website bears any similarity to Complainant’s site, as claimed, or how users might be redirected to Complainant’s site. In light of these evidentiary deficiencies, the Panel will not consider the issue of whether Respondent’s website is similar to, or redirects users to Complainant’s own website.
Notwithstanding the poor quality of the submitted screenshots, it is possible to see that Respondent’s website does make multiple mentions the BITMEX mark and contains text relating to cryptocurrency exchange services. Use of a confusingly similar domain name to attract users to one’s own website for commercial gain is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Orange Brand Services Limited v. WhoisGuard Protected, WhoisGuard, Inc / ImadZerhouni, Orange IPTV, D2019-2202 (WIPO Oct. 18, 2019) (no bona fide commercial offering found where Respondent is “targeting the Complainant’s well-known trademarks to offer competing and possibly illicit services”.) Further, an apparently competitive and commercial nature of a disputed domain name’s website removes it from being a legitimate or noncommercial fair use under Policy ¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“[U]se of a domain to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy¶4(c)(iii).”) As the Respondent’s website does use the BITMEX mark in what appears to be an offer of cryptocurrency exchange services and as Respondent itself has made no Response or other submission in this case, the Panel finds that a preponderance of the evidence does tip towards a finding that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the “extensive adoption of Complainant's services by consumers”, its BITMEX mark “has become one of the most recognizable names in the cryptocurrency field” and has been “celebrated internationally”. However, Complainant submits no supporting evidence for these claims. While it has submitted evidence of its trademark registrations, these only supply proof that trademark rights exist. They do not indicate the popularity, fame, or reputation of the protected mark. However, the Panel does find 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, Respondent’s website makes multiple mentions of the BITMEX mark and appears to offer services that are in the same line of business as Complainant. This 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 argues the Respondent used the <bitmexix.com> domain name in bad faith as Respondent’s website offers competing or fraudulent services and redirects to Complainant’s legitimate domain. Use of a disputed domain name to impersonate or pass oneself off as a complainant, or to resolve to a Complainant’s own legitimate website may be evidence of bad faith per Policy ¶ 4(b)(iv). See Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Daksh MAdan, Daksh, D2019-2193 (WIPO Oct. 25, 2019) (“the website to which the disputed domain name resolves purports to impersonate the Complainant. This Panel finds therefore that the disputed domain name was on the balance of probabilities registered in order to take predatory advantage of the Complainant’s reputation and to mislead Internet users...”); Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”) Here, Complainant provides rather grainy screenshots of Respondent’s <bitmexix.com> website that are difficult to read and it is not specified as to how the disputed domain redirects users to Complainant’s own website. However, one can at least discern that Respondent’s website makes multiple uses of the BITMEX mark and appears to offer cryptocurrency exchange trading services which seem to compete with Complainant’s own services. Therefore, in the absence of any Response or contradictory evidence being submitted by the Respondent, the Panel finds that the disputed domain name was registered and used in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant submits into evidence what it claims are two demand letters[i] that were sent, via email and post, to the Respondent raising this dispute between the BITMEX mark and the <bitmexix.com> domain name. Complainant states that it 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. 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). In light of all the circumstances of this case, Respondent’s failure to reply to the Complainant will be accepted as supporting evidence that the disputed domain name was registered and used in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexix.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 31, 2019
[i] The submitted images of these demand letter are rather grainy and difficult or impossible to read. However, they do appear to be demand letters and, in the absence of any objection from the Respondent, will be accepted as claimed.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page