HDR Global Trading Limited v. bitm / mnip ip
Claim Number: FA2304002042362
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, United States of America (“United States”). Respondent is bitm / mnip ip (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexnet.com> (the “disputed domain name”), registered with NameSilo, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on April 28, 2023; Forum received payment on April 28, 2023.
On April 29, 2023, the Registrar confirmed by e-mail to Forum that the <bitmexnet.com> disputed domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. The Registrar 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 May 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@bitmexnet.com. Also on May 1, 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 May 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a prominent cryptocurrency trading platform marketed to millions of consumers around the world in six languages. Complainant has been offering premier financial trading services in the field of digitized assets and cryptocurrencies since its inception in 2014. Today, Complainant’s business currently averages several hundreds of millions to a billion dollars or more of trading volume per day. Complainant is one of the largest cryptocurrency trading platforms in the world, servicing customers all over the world.
Through its wholly owned subsidiary, Complainant claims rights in the BITMEX trademark through its registration of the mark with multiple trademark agencies around the world, including, but not limited to, the following trademarks: International Trademark Registration No. 1514704, European Union Trademark Registration No. 16462327, People’s Republic of China Trademark Registration No. 23148680, United Kingdom Trademark Registration No. 00003218498, United Kingdom Trademark Registration No. 00003390977, and United Kingdom Trademark Registration No. 00003390955. Complainant also asserts rights to the BITMEX trademark based on other trademark offices worldwide.
The aforementioned trademarks will hereinafter be collectively referred to as the “BITMEX Mark”.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark because it contains the BITMEX Mark in its entirety, merely adding the term “net” and the generic Top-Level Domain (“gTLD”) “.com”.
Complainant also contends that Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the BITMEX Mark, is not commonly known by the disputed domain name, and Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent initially uses the disputed domain name to offer competing cryptocurrency trading services, but that subsequently Respondent uses the disputed domain name passively.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name directs to a website that competes with that of Complainant and attempts to pass off as Complainant. In addition, the subsequent passive use of the disputed domain name demonstrates Respondent’s bad faith registration and use. Additionally, Respondent’s actual knowledge of the BITMEX Mark establishes Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the BITMEX Mark based on its trademark registrations with several trademark offices worldwide. Registration with various trademark offices is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BITMEX Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the BITMEX Mark as set forth below.
The Panel finds that Complainant has rights in the BITMEX Mark per Policy paragraph 4(a)(i) through its registration of the mark with various trademark offices worldwide (e.g., International Trademark Registration No. 1514704). Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BITMEX Mark as it consists of the entirety of the BITMEX Mark, followed by the term “net”, and then is followed by the gTLD “.com”. The addition of a generic term fails to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and a gTLD; the differences between the disputed domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy). The addition of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar since the use of a gTLD is a technical requirement. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the BITMEX Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant, as the disputed domain name initially redirected to a website with competing cybercurrency trading services. This alone is sufficient to show that Respondent has no rights or legitimate interests in the disputed domain name. See Opportunity Financial, LLC v. Dylan Smith, FA2 207002006507 (Forum August 25, 2022) (“Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy paragraph 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at issue domain name.”).
Beginning August 29, 2023 and at the time of filing this Complaint, the disputed domain name currently resolves to an inactive webpage. This use is not a legitimate use and demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent attracts Internet users for commercial gain by using the disputed domain name to pass itself off as Complainant and to disrupt Complainant’s business, indications of bad faith. Passing off as Complainant for commercial gain demonstrates bad faith under Policy paragraph 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy paragraph 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.”). Here, Respondent is engaging in the impersonation of Complainant by competing with Complainant’s cybercurrency trading services offered on its website, with the only conceivable explanation being to engage in nefarious conduct and deceive users.
Third, the Panel finds that Respondent registered the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the BITMEX Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014); See also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 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.”).
Moreover, the fame of the BITMEX Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BITMEX Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its BITMEX Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Fourth, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name currently resolves to an inactive parking page with no substantive content. Failure to make active use of a disputed domain name is evidence of bad faith under Policy paragraph 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Finally, Complainant states that Respondent acted in bad faith because Respondent failed to respond to Complainant’s cease-and-desist letter. Failure to respond to a cease-and-desist letter may demonstrate bad faith pursuant to Policy ¶ 4(a)(iii). 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). Therefore, the Panel finds that Respondent acted in bad faith.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <bitmexnet.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 5, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page