HDR Global Trading Limited v. Feu LI
Claim Number: FA2302002033129
Complainant is HDR Global Trading Limited “(Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, Washington D.C., USA. Respondent is Feu LI “(Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.cam>, registered with NETIM SARL.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on February 23, 2023; Forum received payment on February 23, 2023.
On February 27, 2023, NETIM SARL confirmed by e-mail to Forum that the <bitmex.cam> domain name is registered with NETIM SARL and that Respondent is the current registrant of the name. NETIM SARL has verified that Respondent is bound by the NETIM SARL 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 February 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2023 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.cam. Also on February 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2023, 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 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, 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, HDR Global Trading Limited, operates a cryptocurrency trading platform. Complainant has rights in the BITMEX mark through its registration with multiple trademark organizations including the European Union Intellectual Property Office “(EUIPO”) (e.g. Reg. No. 016,462,327, registered on August 11, 2017). Respondent’s <bitmex.cam> domain name is identical or confusingly similar to Complainant’s BITMEX mark as it incorporates the mark while adding the “.cam” top-level domain “(TLD”).
Respondent lacks rights and legitimate interests in the <bitmex.cam> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead previously passed off as Complainant and currently hosts a parked page with pay-per-click content.
Respondent registered and uses the <bitmex.cam> domain name in bad faith. Respondent disrupts Complainant’s business while attracting users for commercial gain and passing itself off as Complainant. Additionally, Respondent hosts a parked page with pay-per-click links. Respondent failed to respond to Complainant’s cease-and-desist letter and used a privacy service to hide its identity. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX mark.
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 <bitmex.cam> 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 rights in the BITMEX mark through its registration with multiple trademark organizations including the EUIPO (e.g. Reg. No. 016,462,327, registered on August 11, 2017). Registration of a mark with multiple trademark organizations including the EUIPO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). The Panel finds that Complainant has rights in the BITMEX mark under Policy ¶ 4(a)(i).
Complainant asserts Respondent’s <bitmex.cam> domain name is identical or confusingly similar to Complainant’s BITMEX mark. Under Policy ¶ 4(a)(i), adding a TLD to a mark is insufficient in differentiating from the 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 domain name incorporates the mark while adding the “.cam” top-level domain. The Panel finds that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under 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 asserts that Respondent is not commonly known by the <bitmex.cam> domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX Mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) “(The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainants mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) “(The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “Feu Li.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts Respondent is not using the <bitmex.cam> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use by previously passing off as Complainant and currently hosting a parked page. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. 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). Additionally, using a domain name to host a parked page with pay-per-click advertisements is not a bona fide offering of goods or services, nor any noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) “(The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s previously resolving website, where Respondent passes off as Complainant and displays Complainant’s mark. Additionally, Complainant provides screenshots of the currently resolving webpage, which is a parked page with pay-per-click links. The Panel finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <bitmex.cam> domain name in bad faith by disrupting Complainant’s business and attracting users for commercial gain while passing itself off as Complainant. Under Policy ¶ 4(b)(iii), a respondent disrupts a complainant’s business where it attempts to offer competing links or passes off as a complainant. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) “(Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Additionally, under Policy ¶ 4(b)(iv), passing off as a complainant while attracting users for commercial gain and/or hosting a parked page with click-through links is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) “(This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant has provided screenshots of the domain name’s previously resolving website, where respondent passes off as complainant while offering competing services. Complainant has also provided evidence of Respondent’s currently-resolving webpage, which hosts a parked page. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts Respondent registered and uses the <bitmex.cam> domain name in bad faith by failing to respond to Complainant’s cease-and-desist letter and Respondent’s use of a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), failing to respond to a cease-and-desist letter is 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, under Policy ¶ 4(a)(iii), using a privacy service to hide one’s identity is evidence of bad faith registration and use. 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.”). Complainant attached the cease-and-desist letter which Respondent failed to respond to and Complainant notes that Respondent uses a privacy service to hide its identity. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues Respondent registered the <bitmex.cam> domain name with bad faith actual knowledge of Complainant’s rights in the BITMEX mark. Under Policy ¶ 4(a)(iii), actual knowledge is sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant’s well-known BITMEX mark is fully incorporated into the disputed domain name. The Panel finds from the fame of the mark and the use made of the mark that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii) and Respondent registered and uses the domain name in bad faith.
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 <bitmex.cam> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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