HDR Global Trading Limited v. GODSWILL blessing
Claim Number: FA2204001993726
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is GODSWILL blessing (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexcryptotrading.com>, registered with OwnRegistrar, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2022; the Forum received payment on April 25, 2022.
On April 26, 2022, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <bitmexcryptotrading.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 April 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@bitmexcryptotrading.com. Also on April 27, 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 20, 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 claims rights in the BITMEX service mark, established by its ownership of its portfolio of registrations described below and its extensive use of the mark in its crypto-currency trading business. Complainant submits that since it was established in 2014, its business has grown to average between $1 billion and $5 billion of trading volume per day and claims that with its annual trading volume of $1 trillion, Complainant is one of the largest trading platforms in the world, serving customers all over the world.
Complainant alleges that the disputed domain name is confusingly similar to the BITMEX mark in which it has rights, submitting that the disputed domain name incorporates the BITMEX mark in its entirety and contending that it is well-settled that where a domain name incorporates a complainant’s mark, that domain name is identical or confusingly similar to the complainant’s mark under paragraph 4(a)(i) of the Policy. Citing Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case D2000-0163.
Complainant further contends that the addition of the non-distinctive element “cryptotrading” is insufficient to avoid a finding of confusing similarity between the disputed domain name and Complainant’s trademark. Further, the term “cryptotrading” exacerbates the confusing similarity because Complainant goods and services offers a cryptocurrency trading platform. Citing AGFA-GEVAERT N.V. v. Ziyuanzhan, WIPO Case No. D2019-3198 (“The test for whether a domain name is identical or confusingly similar to the Complainant’s trademarks is fairly straightforward satisfy the threshold … Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether geographical, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).
Furthermore Complainant argues that the addition of the generic Top-Level Domain (“gTLD”) suffix <.com> does nothing to distinguish the disputed domain name from 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, arguing that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed Respondent to use Complainant’s BITMEX mark.
Referring to a screen captures of the website to which the disputed domain name resolved December 6, 2021 and April 23, 2022. which are exhibited as an annex to the Complaint, Complainant shows that the webpages show that Respondent was impersonating Complainant in order to attract business away from complainant. The content on the websites include the statements: “BITMEX CRYPTO TRADING”, and “EXCHANGE YOU CAN TRUST,” and “369K Active Accounts.” Prior panels have held that a respondent has no rights or legitimate interests in a domain name where, as here, the domain name at issue includes a complainant’s trademark and impersonates the complainant in an attempt to defraud unsuspecting consumers. See 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.”).
Complainant adds that Respondent is not known by the disputed domain name and registered the disputed domain name using a privacy service, and argues that prior panels have held that a respondent had no rights or legitimate interests in a domain name at issue when there was no evidence indicating that the respondent was known by the disputed domain name. See Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case 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 any evidence in the case file showing that Respondent may be commonly known as ‘accenture.’”).
Additionally, Complainant submits that the disputed domain directed to an inactive webpage at the time of filing of the Complaint and therefore because Respondent is not making a legitimate noncommercial or fair use of the disputed domain name Respondent has no legitimate interests,.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith. Asserting that the BITMEX mark is distinctive and well known, Complainant argues that the registrant of the disputed domain name had actual knowledge of Complainant’s mark when the disputed domain name was registered, long after Complainant began building its cryptocurrency trading platform under those marks. See HDR Global Trading Limited v. A Si Di Fen Teng Ren, Claim No. FA2112001975598 (Forum Dec. 31, 2021) (“In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy.”).
Complainant argues that, notwithstanding such knowledge, the registrant proceeded to register the disputed domain name in bad faith to exploit Complainant’s success and take advantage of its goodwill in the BITMEX mark by registering the disputed domain name years after Complainant acquired rights in the BITMEX mark and years after Complainant began building its cryptocurrency trading platform under the mark. See HDR Global Trading Limited v. A Si Di Fen Teng Ren, Claim No. FA2112001975598 (Forum Dec. 31, 2021) (“In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy.”).
Referring to the crypto-currency trading services purportedly offered on the website to which the disputed domain name resolves Complainant further alleges that Respondent is using the disputed domain name in bad faith because not only is Respondent offering competing services, but the content of Respondent’s website shows that Respondent is attempting to pass off Complainant’s services as its own in an effort to defraud the public. See 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).).
Finally, Complainant has adduced in evidence in an annex to the Complaint, copies of cease and desist letters sent to Respondent, which remain unanswered. Complainant argues that Respondent’s lack of communication, in combination with Respondent’s 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 provides cryptocurrency-based financial services on its virtual trading platform using the BITMEX trademark and is the registered owner of a portfolio of trademark registrations including the following:
· European Union Trademark BITMEX, registration number 016462327, registered on August 11, 2017 for services in class 36;
· Republic of Korea registered trademark BITMEX, registration number 40-1463637, registered on March 29, 2019 for services in class 36.
Complainant has an established Internet presence and provides its services on the platform on its principal website to which its domain name <bitmex.com>, registered on August 27, 2003, resolves.
The disputed domain name was registered on December 6, 2021. On the date on which the Complaint was made the disputed domain name was inactive. On December 6, 2022 and April 23, 2022, it resolved to a webpages using the BITMEX mark presenting a trading platform purporting to offer cryptocurrency trading services.
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 details of the registration of the disputed domain name. Respondent has availed of a privacy service to conceal his identity on the Registrar’s WhoIs and the Registrar has revealed and confirmed that Respondent 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 rights in the BITMEX mark, established by its ownership of the United States trademark registrations described above.
The disputed domain name <bitmexcryptotrading.com> consists of Complainant’s mark in its entirety, in combination with the elements “crypto”, “trading” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s BITMEX mark is the initial, dominant and only distinctive element in the disputed domain name. The elements “crypto” and “trading” are descriptive and add no distinguishing character to the disputed domain name, nor does the gTLD extension <.com> which would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <bitmexcryptotrading.com> is 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
· Respondent is not known by the disputed domain name;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to use Complainant’s BITMEX mark;
· At the time of filing this Complaint, the disputed domain name directs to an inactive webpage and such use is not a legitimate use and demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name;
· The screen captures of the website to which the disputed domain name resolved December 6, 2021 and April 23, 2022, illustrate Respondent’s use of Complainant’s trademark and impersonation of Complainant by Respondent in an attempt to defraud unsuspecting consumers in order to attract business away from complainant and to a competing website. Such use would not give rise to any rights or legitimate interests;
· Respondent registered the disputed domain name through a privacy service;
· There is no evidence indicating that Respondent was known by the disputed domain name;
· Respondent is not using the disputed domain name in connection with any rights or legitimate interests or making a legitimate noncommercial or fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent 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 disputed domain name consists principally of Complainant’s distinctive BITMEX in combination with the descriptive phrase “cryptotrading”. There is nothing on the record to suggest that the registrant of the disputed domain name had any rights in the BITMEX mark at any time or any legitimate reason for choosing and registering it.
BITMEX is a distinctive mark and the phrase “cryptotrading” describes Complainant’s business.
The uncontested evidence on the record shows that at the time the disputed domain name was registered Complainant had already established a strong reputation for its crypto-trading business and the BITMEX mark and its trading platform.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s reputation and goodwill in the BITMEX mark.
The disputed domain name was inactive on the date on which this Complaint was filed, but the uncontested evidence shows that Respondent has used the disputed domain name as the address of a website that not only purported to offer crypto-currency trading services which competed with Complainant’s offerings, but he also impersonated Complainant in an intentional attempt to attract, mislead and misdirect Internet users. The content of the website to which the disputed domain name resolved was intentionally designed to create the false impression of a connection between Complainant and Respondent’s website and to impersonate Complainant.
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 Responded availed of a privacy service to conceal his identity on the published WhoIs, and has not responded to the Complaint or Complainant’s cease and desist letters.
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 <bitmexcryptotrading.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 23, 2022
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