HDR Global Trading Limited v. chinedu johnpaul
Claim Number: FA2108001958316
Complainant is HDR Global Trading Limited (“Complainant”), represented by Anne M. Bolamperti of SNELL & WILMER L.L.P, Arizona, USA. Respondent is chinedu johnpaul (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexfxmarket.com>, registered with NameCheap, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2021; the Forum received payment on August 5, 2021.
On August 5, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmexfxmarket.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2021 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@bitmexfxmarket.com. Also on August 9, 2021, 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 September 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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
i) Complainant, HDR Global Trading Limited, owns and operates a cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 16,462,327, registered August 11, 2017). The disputed domain name is confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the generic or non-distinctive term “fxmarket” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the BITMEX mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent merely capitalizes on Complainant’s reputation to redirect Internet traffic to a competing website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent capitalizes on the goodwill associated with Complainant’s mark for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when the disputed domain name was registered.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on March 2, 2021.
2. Complainant has rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 16,462,327, registered August 11, 2017).
3. The disputed domain name’s resolving website displays information related to cryptocurrency in competition with Complainant.
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 asserts rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the EUIPO. Registration of a mark with a trademark agency is generally considered to be a valid showing of rights in a mark under Policy ¶ 4(a)(i). 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).”). Complainant provides evidence of registration of the BITMEX mark with the EUIPO (e.g., Reg. No. 16,462,327, registered August 11, 2017). Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the generic or non-distinctive term “fxmarket” and the “.com” gTLD. Under Policy ¶ 4(a)(i), addition of a generic/descriptive term and a gTLD is insufficient to overcome the confusing similarity between a domain name and the mark it incorporates. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Complainant notes that the term “fxmarket” refers to “foreign exchange market.” Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BITMEX mark under 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), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the BITMEX mark and Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Chinedu Johnpaul” and no information indicates that Complainant authorized Respondent to use the mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent merely capitalizes on Complainant’s reputation to redirect Internet traffic to a competing website. Use of a disputed domain name to redirect users to a respondent’s own webpage for commercial gain is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), particularly where a respondent’s use competes with a complainant’s business. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant provides a screenshot of Respondent’s webpage, noting that it displays information related to cryptocurrency in competition with Complainant. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 claims that Respondent registered and uses the disputed domain name in bad faith since Respondent capitalizes on the goodwill associated with Complainant’s mark for commercial gain. Use of a disputed domain name to attract Internet users to a webpage for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that Respondent uses the disputed domain name to willfully capitalize on Complainant’s goodwill for commercial purposes. Complainant provides a screenshot of the cryptocurrency-related services offered at Respondent’s webpage in competition with Complainant. Thus, the Panel agrees with Complainant and finds bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when the disputed domain name was registered. Actual knowledge of a complainant’s rights in a mark may act as evidence of bad faith registration and use under Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of a disputed domain name. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s actual knowledge is evident from Complainant’s longstanding use of the mark and Respondent’s use of the mark in the disputed domain name and on the associated website. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge, and thus it finds that Respondent registered and uses the domain name in bad faith under 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 <bitmexfxmarket.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 6, 2021
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