HDR Global Trading Limited v. John Wilson
Claim Number: FA2109001962334
Complainant is HDR Global Trading Limited (“Complainant’), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is John Wilson (“Respondent’), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex29.live>, registered with NameCheap, Inc..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2021; the Forum received payment on September 2, 2021.
On September 3, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmex29.live> 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 September 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@bitmex29.live. Also on September 7, 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 28, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a leading and prominent cryptocurrency based trading platform. Complainant has rights in the BITMEX mark through its registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 16,462,327, registered Aug. 11, 2017). Respondent’s <bitmex29.live> domain name is confusingly similar to Complainant’s BITMEX mark. Respondent incorporates the mark in its entirety and adds the number “29” along with the “.live” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bitmex29.live> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the BITMEX mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent operates a fraudulent scheme where Respondent attempts to impersonate Complainant in order to financial gain from internet users.
Respondent registered and used the <bitmex29.live> domain name in bad faith as Respondent engages in fraudulent activity by impersonating Complainant. Respondent had actual knowledge of Complainant’s rights in the BITMEX mark prior to the registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <bitmex29.live> domain name.
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 EUIPO. Registration of a mark with the EUIPO or other governmental authority is sufficient to establish rights in a mark per 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 has provided the Panel with a copy of its EUIPO registration for the BITMEX mark (e.g. Reg. No. 16,462,327, registered Aug. 11, 2017). The Panel finds that Complainant has shown rights in the mark per Policy ¶ 4(a)(i).
Complainant
argues that Respondent’s <bitmex29.live>
domain name is confusingly
similar to Complainant’s BITMEX mark. Registration of a domain name that
contains a mark in its entirety and adds a number along with a gTLD does not
distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna
Holdings, LLC v. Edna Sherman, FA 1652781 (Forum
Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient
in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent
incorporates the mark in its entirety and adds the number
“29” along with the “.live” gTLD. The Panel finds that domain name is
confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 a prima facie case.
Complainant argues Respondent lacks rights or legitimate interests in the <bitmex29.live> 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. Where a response is lacking, WHOIS information may be used to determine whether a respondent is 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 “John Wilson” and there is no evidence to suggest that Respondent was authorized to use the BITMEX mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent operates a fraudulent scheme where Respondent attempts to impersonate Complainant in order to financial gain from internet users. Use of a disputed domain name to impersonate a complainant in furtherance of fraudulent activity for financial gain is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant has provided the Panel with a screenshot of Respondent’s <bitmex29.live> domain name that offers services and products that compete with and are related to Complainant’s business. The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and used the <bitmex29.live> domain name in bad faith as Respondent engages in fraudulent activity by impersonating Complainant. Use of a disputed domain name to pass off as a complainant in order to offer fraudulent and competing services may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Complainant has provided the Panel with a screenshot of Respondent’s <bitmex29.live> domain name that offers services and products that compete with and are related to Complainant’s business. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark at the time of registering the <bitmex29.live> domain name. Actual knowledge of Complainant’s mark prior to registering the disputed domain name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark and registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <bitmex29.live> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 4, 2021
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