HDR Global Trading Limited v. feu li
Claim Number: FA2208002010361
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is feu li (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.bond>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2022; the Forum received payment on August 30, 2022.
On August 30, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <bitmex.bond> 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 August 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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.bond. Also on August 31, 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 September 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 operates a cryptocurrency platform. Complainant claims rights to the BITMEX trademark through its registration with multiple trademark agencies, including the United Kingdom Intellectual Property Office (“UKIPO”)(e.g., Reg. No. 00003218498, registered June 2, 2017). Respondent’s <bitmex.bond> domain name is identical or confusingly similar to Complainant’s BITMEX trademark as it incorporates the trademark in its entirety, and adds only the “.bond” top-level domain (“TLD”) to form.
Respondent lacks rights and legitimate interests in the <bitmex.bond> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX trademark. Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Rather, Respondent previously used the confusingly similar nature of the disputed domain name to impersonate Complainant and offer competing services. Currently, the disputed domain name resolves to an inactive webpage.
Respondent registered and uses the <bitmex.bond> domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain in order to attract users to Respondent’s own webpage. Further, Respondent previously used the disputed domain name in an attempt to impersonate Complainant and purport to offer competing services, likely in an attempt to defraud users. Currently, Respondent’s bad faith may be demonstrated through its inactive holding of the disputed domain name. Furthermore, Respondent failed to respond to Complainant’s two cease-and-desist letters. Respondent also registered the disputed domain name with a privacy service to hide its identity. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s well-known trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and regional trademark registrations and applications, such as:
- The International Trademark Registration No. 1514704 BitMEX (fig), registered October 10, 2019 for goods and services in Intl Classes 9 and 36
- The EU Trade Mark Registration No. 016462327 BITMEX (word), registered August 11, 2014 for services in Intl Class 36
- People's Republic of China National Trademark Registration No. 23148680 BitMEX (fig) for services in Intl Class 36
- United Kingdom National Trademark Registration No. UK00003218498 BITMEX (word), registered June 2, 2017 for services in Intl Class 36
- United Kingdom National Trademark Registration No. UK00003390977 BitMEX (fig), registered June 28, 2019 for goods and services in Intl Classes 9 and 36.
The disputed domain name <bitmex.bond> domain name was registered on February 17, 2021.
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”).
The Complainant claims rights in the BITMEX trademark through its registration with multiple trademark agencies including the UKIPO (e.g., Reg. No. 00003218498, registered June 2, 2017). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel find that Complainant has rights in the BITMEX trademark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
Complainant argues that Respondent’s <bitmex.bond> domain name is identical or confusingly similar to Complainant’s BITMEX trademark. Under Policy ¶ 4(a)(i), fully incorporating a trademark in its entirety and adding a TLD fails to sufficiently distinguish a domain name from a registered mark. See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”). Respondent’s <bitmex.bond> domain name clearly incorporates the trademark in its entirety, and adds only the “.bond” TLD. The Panel notes that, although normally the addition of a TLD makes no difference when considering the similarity between a trademark and a disputed domain name, in this case the complainant is in the financial industry and the TLD “.bond” is especially focused on financial service providers. The addition of “.bond” therefore even more clearly refer directly to the Complainant’s trademark and related business. Therefore, the Panel find that Respondent’s domain name is identical to Complainant’s trademark pursuant to Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that Respondent lacks rights or legitimate interests in the <bitmex.bond> domain name. Respondent is not commonly known by the disputed domain name, Complainant’s rights precede Respondent’s registration, and Complainant has not authorized or licensed to Respondent any rights in the well-known BITMEX trademark. Under Policy ¶ 4(c)(ii), information in the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name) . Further, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). According to the disputed domain name’s WHOIS information, and other information on the record, Respondent is not commonly identified by “Bitmex”. Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s BITMEX trademark in the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <bitmex.bond> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. A respondent’s use of a disputed domain name’s resolving website to impersonate a complainant may indeed not be considered any bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Additionally, use of a disputed domain name’s resolving webpage in order to offer competing goods or services does not qualify as any bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant has attached screenshots of the previous resolving website for the <bitmex.bond> domain name which impersonates Complainant and purports to offer competing cryptotrading services under Complainant’s trademark, while also claiming to be Complainant. Therefore, the Panel find that Respondent does not use the <bitmex.bond> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent’s current inactive holding of the <bitmex.bond> domain name demonstrates Respondent’s lack of rights and legitimate interests in the domain name. A respondent’s inactive holding of disputed domain name may provide evidence that a respondent lacks rights and legitimate interests in a disputed domain name. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Respondent’s domain name does not currently resolve to an active webpage. The Panel find that Respondent’s current inactive holding demonstrates a lack of rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and used the <bitmex.bond> domain name to attract Internet users and purport to offer services in direct competition with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent used a confusingly similar domain name to attract Internet users and capitalize from that confusion. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Past panels have also found that use of a domain name that is confusingly similar to a complainant’s trademark to offer services in direct competition to complainant illustrates a respondent’s bad faith registration and use. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). Additionally, use of a disputed domain name to impersonate a complainant supports a finding of bad faith registration and use. See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). As noted in the present case, the Complainant has shown screenshots of the disputed domain name, which features offerings of services arguably in direct competition with Complainant’s own services. Respondent also attempts to pass off as Complainant through the use of Complainant’s trademark and logo while claiming to be Complainant. Respondent also incorporates Complainant’s BITMEX trademark in whole in the disputed domain name, presumably to attract and divert Internet users. Therefore, the Panel find that Respondent registered and used the <bitmex.bond> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s current inactive holding of the <bitmex.bond> domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). A respondent’s inactive holding of a disputed domain name may provide additional evidence of a respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Currently, the disputed domain name fails to resolve to an active webpage, and based on that the Panel find that Respondent’s inactive holding of the disputed domain name supports a finding of bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent uses and registered the <bitmex.bond> domain name in a bad faith attempt to perpetuate a phishing scheme. Generally, using a disputed domain name to fraudulently phish for information is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends that Respondent likely used the disputed domain name in an attempt to mislead users into believing they were dealing with Complainant and deceive them into transferring valuable cryptocurrency to Respondent. The Panel agrees with Complainant’s conclusion, and find that Respondent used and registered the domain name in bad faith in order to facilitate a phishing scheme under Policy ¶ 4(a)(iii).
Furthermore, Complainant contends that Respondent registered and uses the <bitmex.bond> domain name in bad faith by failing to respond to Complainant’s cease-and-desist letters, and due to its use of a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), failure to respond to a cease-and-desist letter may be evidence of bad faith registration and use. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Additionally, use of a privacy service to hide one’s identity may contribute to a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, Complainant provides copies of its two cease-and-desist letters sent to Respondent on April 22, 2022 and May 6, 2022. Additionally, the Panel notes that Respondent used a privacy service to initially hide its identity. Thus, the Panel may find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent registered the <bitmex.bond> domain name with actual knowledge of Complainant’s rights in the BITMEX trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered trademark into a domain name. 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”). Further, use of confusingly similar domain name to impersonate a complainant supports a finding that a respondent had actual knowledge of a complainant’s mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant’s BITMEX trademark is well-known and widely used. Further, Respondent used the disputed domain name to impersonate the Complainant. Respondent’s impersonation of Complainant, as well as Respondent’s entire incorporation of Complainant’s well-known BITMEX trademark in the disputed domain name enables the Panel to find that Respondent had actual knowledge of Complainant’s rights in the trademark 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 <bitmex.bond> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 4, 2022
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