HDR Global Trading Limited v. KIMSUNGBEOM
Claim Number: FA2009001913337
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, Arizona. Respondent is KIMSUNGBEOM (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aboutbitmex.net> (the “disputed domain name”), registered with Gabia, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020. The Complaint was received in both Korean and English.
On September 24, 2020, Gabia, Inc. confirmed by e-mail to the Forum that the <aboutbitmex.net> disputed 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 September 30, 2020, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of October 20, 2020 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@aboutbitmex.net. Also on September 30, 2020, 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 October 26, 2929, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a leading and prominent cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark through its registration of the mark with the multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016462327, registered on August 11, 2017) (the “BITMEX Mark”).
Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s BITMEX Mark, Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds valid trademark rights in the BITMEX Mark. The disputed domain name is confusingly similar to Complainant’s BITMEX Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name 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”).
Preliminary Issue: Language of the Proceedings
Prior to discussing the three elements of the Policy, the Panel must decide the language of the proceedings. The Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party. See The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (Forum Mar. 3, 2020) (deciding that the proceedings may be conducted in English without prejudice to the Respondent, because the Forum provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case). 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 should be conducted in English.
The Panel finds that Complainant has rights in the BITMEX Mark through its registration of the mark with multiple trademark agencies, including the EUIPO (e.g. Reg. No. 016462327, registered on August 11, 2017). Registration of a mark with multiple trademark agencies around the world, including the EUIPO, is sufficient to demonstrate rights in the mark 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.”); see also Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”).
Next, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s BITMEX Mark as it incorporates the BITMEX Mark in its entirety and merely adds the term “about” and the “.net” generic Top-Level Domain (“gTLD”). The addition of a dictionary or descriptive term and a gTLD such as .net does not distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the BITMEX Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant nor has Complainant authorized Respondent to use the BITMEX Mark in any way.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that the Respondent registered and is using the <aboutbitmex.net> disputed domain name in bad faith.
First, Respondent used the disputed domain name to create an affiliation with Complainant while simultaneously advertising a competitor of Complainant. Such use can demonstrate bad faith registration and use per Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant has provided screenshots of Respondent’s initial website that demonstrates how the website featured hashtags associated with Complainant’s goods and services, and how the website contained a reference to “Bitmax”, a competitor of Complainant.
Second, Respondent did not reply to Complainant’s cease and desist letters. However, after receipt of those letters, Respondent took down the website to which the disputed domain name resolved and used the disputed domain name passively. A respondent registering a domain name and subsequently failing to make use of the disputed domain name is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aboutbitmex.net> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: October 29, 2020
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