HDR Global Trading Limited v. yang hang
Claim Number: FA2204001992108
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is yang hang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.pet>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2022; the Forum received payment on April 12, 2022.
On April 13, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <bitmex.pet> 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 April 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2022 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@bitmex.pet. Also on April 14, 2022, 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 May 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 submits that it owns and operates a leading and prominent cryptocurrency-based trading platform marketed to millions of consumers around the world in five languages, offering premier financial trading services in the field of digitized assets such as bitcoins, cryptocurrency, digital tokens, virtual currency, and digital currencies.
Since its inception in 2014. Complainant’s business has grown to average between $1 billion and $5 billion of trading volume per day, with an annual trading volume of $1 trillion and so it has become one of the largest trading platforms in the world.
Complainant has provided evidence that it owns a number of domain names in which it uses the BITMEX mark including <bitmex.com> which is used as the address of its principal website. Others include <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
Complainant submits that the disputed domain name is confusingly similar to, and is almost identical to BITMEX mark, as it incorporates Complainant’s mark in its entirety. Complainant submits that it is well-settled that where a domain name incorporates a complainant’s mark, the domain name is confusingly similar to the complainant’s mark under paragraph 4(a)(i) of the Policy. Citing Softcom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.
Complainant contends that the addition of the generic Top Level Domain (“gTLD”) extension <.pet> to form the disputed domain name, <bitmex.pet> does nothing to distinguish the disputed domain name from the BITMEX marks and does not obviate a finding of confusing similarity between the disputed domain name and the BITMEX mark. See Axis AB v. Roger Ralston, Directview Holdings, Inc., WIPO Case No. D2018-2058 (“Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (‘gTLD’) . . . may be typically disregarded for purposes of consideration of confusing similarity between a trademark and a domain name.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name because it incorporates Complainant’s BITMEX mark and asserts that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed to Respondent any rights regarding Complainant’s BITMEX mark.
Complainant contends that prior panels established under the Policy have held that a respondent has no rights or legitimate interests in a domain name where, as here, the domain name includes a complainant’s trademark and impersonates the complainant in an attempt to defraud unsuspecting consumers. Citing G4S Plc v. Mathia Klif, WIPO Case No. D2020-0158 (“[U]se of a domain name for illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent.”).
Referring to screen captures of the website to which the disputed domain name resolved which are adduced in evidence in an annex to the Complaint, Complainant submits that at the time of filing this Complaint, the disputed domain resolved to an infringing website, using Complainant’s BITMEX mark while offering a competing cryptocurrency trading service.
Complainant argues that the screen captures show that Respondent is using the disputed domain name in connection with a fraudulent scheme wherein Respondent impersonates Complainant to swindle unsuspecting consumers to pay for Respondent’s alleged cryptocurrency services by impersonating Complainant in order to attract business away from Complainant and to a competing website. Citing Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, WIPO Case No. D2018-0780 (“Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name in order to impersonate the Complainant for the purpose of attracting business to its competing website. Such use would not give rise to any rights or legitimate interests and, having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.”).
Furthermore, Complainant argues that the fact that Respondent chose to conceal his identity by availing of a privacy service indicates that Respondent has no rights or legitimate interests in the disputed domain name. Prior panels established under the Policy, have held that a respondent did not have rights or legitimate interests in a disputed domain when there was no evidence that the respondent was known by the disputed domain. Citing Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case No. D2020-2778 (“Respondent is not identified in the WhoIs database as ‘accenture.’ Previous UDRP panels have held that a respondent was not commonly known by a disputed domain name for example if the WhoIs information was not similar to the disputed domain name. There is not evidence in the case file showing that Respondent may be commonly known as ‘accenture.’”).
Complainant next argues that the disputed domain name was registered in bad faith, arguing that Complainant has spent years building its cryptocurrency trading platform and developing the BITMEX marks and has acquired protectable trademark rights in the BITMEX marks which are recognized internationally. BITMEX is a distinctive mark.
Given the distinctiveness of Complainant’s BITMEX mark is improbable that the disputed domain name was registered without actual knowledge of Complainant’s rights in the mark Valio Oy v. Muhammad Tayab, Dairy Engineering Int’l, WIPO Case No. D2017-2376 (“Respondent is highly likely to have had actual knowledge of Complainant’s famous VALIO mark, as evidenced by Respondent’s use of the identical mark in the disputed domain name. The fact that Respondent registered a domain name which incorporates the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith.”).
Furthermore, Complainant argues that it is probable that the disputed domain name was registered intentionally attempting to deceive Internet users as to the source and ownership of the disputed domain name. Citing The Net-A-Porter Group Limited v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0863 (“[T]his Panel is conscious that given the distinctive character of the Complainant’s NET-A-PORTER mark it is most improbable that the Respondent was unaware of the Complainant’s business and its reputation among internet users when the disputed domain names were chosen and registered.”).
Referring to the screen captures adduced in evidence in the annexes to the Complaint, Complainant argues that the evidence shows that Respondent is using the disputed domain name as the address of a website to offer services that are competing with Complainant and Respondent is passing itself off as Complainant. Complainant contends that prior panels established under the Policy have held that a disputed domain was registered and being used in bad faith when the disputed domain resolved to a website offering goods or services competing with a complainant. See DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne, WIPO Case No. D2018-2565 (WIPO Dec. 20, 2018) (“It seems clear that the use of the Complainant’s mark in the Domain Name and the use of the Complainant’s box logo is an attempt to cause people to associate the web site at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his web site by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor. As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.”)
Complainant contends that the screen captures annexed to the Complaint show that beginning at least as early as February 8, 2022, the disputed domain name resolved to a website entitled “Bitmex” that displayed a logo identical to Complainant’s blue and red logo at the top of the webpage along with offering competing cryptocurrency trading services. Complainant argues that Respondent’s copying and display of an identical BITMEX Logo on the website increases a likelihood of confusion among potential customers. In short, Respondent seeks to defraud the public by impersonating Complainant and offering a cryptocurrency exchange platform in an attempt to deceptively attract consumers to Respondent’s website in violation of Complainant’s trademark rights.
Complainant adds that Internet users visiting the website to which the disputed domain name resolves are duped into believing that they are dealing with Complainant, are being duped into transferring valuable cryptocurrency to Respondent. Respondent’s use of the disputed domain name to pass itself off as Complainant shows Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii). HDR Global Trading Limited v. Host Master / 1337 Services LLC, FA 1859000 (Forum Sept. 28, 2019) (finding that using a disputed domain name to pass off services as complainant’s is bad faith under Policy ¶ 4(b)(iv).).
Complainant adds that it caused two cease and desist letters to be sent to Respondent, copies of which are annexed to the Complaint, but Respondent did not respond. In addition, Complainant notes that Respondent registered the disputed domain through a privacy service.
Complainant argues that Respondent’s lack of communication and use of a privacy service to hide its identity is persuasive evidence of bad faith registration and use. Citing Groupe IRCEM v. Perfect Privacy, LLC / Milen Radumilo, White & Case, WIPO Case No. D2018-2330 (“[T]he attempts by the Respondent to hide its identity behind a privacy shield and the absence of any response by the Respondent to the Complainant’s emails are all indicators of use in bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and maintains a cryptocurrency-based virtual trading platform on and is the owner of the BITMEX mark. For which it owns the following trademark registrations
· International trademark registration BITMEX (device), registration number 1514704, registered on October 10, 2019 for goods/ services in international class 9;
· European Union Trade Mark BITMEX registration number 016462327, registered on August 11, 2017 for services in class 36;
· Republic of Korea registered service mark number 40-1463637, registered on the Principal Register on March 29, 2019 for services in class 36.
Complainant has an established Internet presence with websites to which its numerous domain names that incorporate the BITMEX mark resolve including <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>,<bitmex.exchange>, and <bitmex.info>.
The disputed domain name was registered on February 5, 2022, and resolves to a website on which Respondent purports to offer cryptocurrency services that compete with Complainant, while prominently displaying Complainant’s BITMEX mark and logo without permission, creating the impression that the website is owned, maintained or associated in some way with Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the registration of the disputed domain name.
The Registrar confirmed that Respondent, who availed of a privacy service to conceal its identity on the published WhoIs, is the registrant of the disputed 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 has provided convincing evidence that it has rights in the BITMEX mark established by its ownership trademark registrations described above and extensive use of the mark in its Internet based cryptocurrency trading platform.
The disputed domain name <bitmex.pet> consists of Complainant’s mark in its entirety, in combination with the generic Top Level Domain “(gTLD”) extension <.pet>.
Complainant’s BITMEX mark is the dominant and only element in the disputed domain name.
The gTLD extension <.pet> adds no distinguishing character to the disputed domain name as it would be considered by Internet users as a necessary technical requirement for registration of a domain name.
This Panel finds therefore that the disputed domain name <bitmex.pet> is both identical and confusingly similar to the BITMEX mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· The disputed domain name incorporates Complainant’s BITMEX mark in its entirety in circumstances where Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed to Respondent any rights regarding Complainant’s BITMEX mark;
· the screen captures of the website to which the disputed domain name resolved which are adduced in evidence in an annex to the Complaint show that at the time of filing this Complaint, the disputed domain resolved to an infringing website, using Complainant’s BITMEX mark while offering a competing cryptocurrency trading service;
· Respondent is fraudulently using the disputed domain name to swindle unsuspecting consumers to pay for Respondent’s alleged cryptocurrency services by impersonating Complainant in order to attract business away from Complainant to a competing website;
· Respondent chose to conceal his identity by availing of a privacy service which is indicative that Respondent has no rights or legitimate interests in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The uncontested evidence shows that Complainant has established rights and an extensive reputation and goodwill in the BITMEX mark prior to the registration of the disputed domain name in February 2022.
The BITMEX mark is distinctive and it is implausible that the identical disputed domain name was chosen by coincidence.
On the balance of probabilities, the disputed domain name was chosen and registered with actual knowledge of Complainant and the BITMEX mark intending that it would be used to take predatory advantage of Complainant’s reputation and goodwill in its business and distinctive BITMEX mark, and create confusion among Internet users because of the identity of the disputed domain name and Complainant’s own domain name which it uses as the address of its main website at <www.bitmex.com>.
There is no other plausible reason as to why the identical disputed domain name would be chosen and registered.
The uncontested evidence further shows that Respondent is using the disputed domain name as the address of a website that not only purports to offer cryptocurrency services which are competing with Complainant’s services, but the content is presented in a manner which is calculated to impersonate Complainant, using Complainant’s BITMEX mark and logo, in an intentional attempt to mislead and misdirect Internet users.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Respondent availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the cease and desist letters sent by Complainant, and has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <bitmex.pet> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 12, 2022
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