HDR Global Trading Limited v. Sun Wukong
Claim Number: FA1908001858673
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of SNELL & V/ILMER L.L.P., Arizona, USA. Respondent is Sun Wukong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitmexciom.com>, <bitmexom.com>, <bitmexe.com>, <bitmexregister.com>, <bitmexsignup.com>, <bitmexw.com>, <bitmexz.com>, <cbitmex.com>, <fbitmex.com>, <gbitmex.com>, <hbitmex.com>, <mbitmex.com>, <nbitmex.com>, <pbitmex.com>, <tbitmex.com>, and <bitmexte.com> (“Domain Names”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2019; the Forum received payment on August 22, 2019.
On August 23, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <bitmexciom.com>, <bitmexom.com>, <bitmexe.com>, <bitmexregister.com>, <bitmexsignup.com>, <bitmexw.com>, <bitmexz.com>, <cbitmex.com>, <fbitmex.com>, <gbitmex.com>, <hbitmex.com>, <mbitmex.com>, <nbitmex.com>, <pbitmex.com>, <tbitmex.com>, and <bitmexte.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2019 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@bitmexciom.com, postmaster@bitmexom.com, postmaster@bitmexe.com, postmaster@bitmexregister.com, postmaster@bitmexsignup.com, postmaster@bitmexw.com, postmaster@bitmexz.com, postmaster@cbitmex.com, postmaster@fbitmex.com, postmaster@gbitmex.com, postmaster@hbitmex.com, postmaster@mbitmex.com, postmaster@nbitmex.com, postmaster@pbitmex.com, postmaster@tbitmex.com, postmaster@bitmexte.com. Also on August 28, 2019, 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 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a leading and prominent cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark through its registration of the mark with the multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016462327, registered August 11, 2017). Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark. Each of the Domain Names contain the BITMEX mark in its entirety and add the “.com” generic top-level domain (“gTLD”). The <bitmexe.com>, <bitmexw.com>, <bitmexz.com>, <cbitmex.com>, <fbitmex.com>, <gbitmex.com>, <hbitmex.com>, <mbitmex.com>, <nbitmex.com>, <pbitmex.com>, and <tbitmex.com> domain names add a letter to the beginning or end of Complainant’s mark. The <bitmexciom.com>, <bitmexom.com>, and <bitmexte.com> domain names add two or three letters to the end of Complainant’s mark. The <bitmexregister.com> and <bitmexsignup.com> domain names add the terms ”register” and “signup” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names nor has Complainant authorized or licensed to Respondent any rights regarding Complainant’s mark. Respondent fails to use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects each of the Domain Names to the domain <binancy.com>, a competing website to Complainant.
Respondent registered and uses the Domain Names in bad faith. Respondent uses the Domain Names to redirect consumers to a competitor of Complainant at www.binance.com. Respondent engages in typosquatting in many of the Domain Names. Respondent had at least constructive knowledge of Complainant’s rights in the BITMEX mark when registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITMEX mark. Each of the Domain Names is confusingly to Complainant’s BITMEX mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 rights in the BITMEX mark based on registration with multiple trademark agencies, including the EUIPO (e.g. Reg. No. 016462327, registered August 11, 2017). Registration of a mark with the multiple trademark agencies around the world, including the EUIPO, is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); see also Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”).
The Panel finds that each of the Domain Names is confusingly similar to the BITMEX mark as they wholly incorporate the BITMEX mark, add a gTLD and either a single letter (<bitmexe.com>, <bitmexw.com>, <bitmexz.com>, <cbitmex.com>, <fbitmex.com>, <gbitmex.com>, <hbitmex.com>, <mbitmex.com>, <nbitmex.com>, <pbitmex.com>, and <tbitmex.com>), two or three letters to the end of the mark (<bitmexciom.com>, <bitmexom.com>, and <bitmexte.com>) or a descriptive word (<bitmexregister.com> and <bitmexsignup.com>). None of these additions distinguishes the Domain Names from the BITMEX Mark for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”) and Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BITMEX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Sun Wukong” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive but there is evidence that prior to the commencement of the proceedings, the Respondent redirected the Domain Names to the website of one of the Complainant’s competitors. Use of a domain name to sell goods or services that directly compete with a complainant’s goods or services may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, June 24-25 2019, Respondent had actual knowledge of Complainant’s BITMEX mark. The Complainant has used the BITMEX mark since 2014 and the Respondent has not provided any explanation (nor is any explanation obviously available) for its registration of 16 domain names that incorporate Complainant’s distinctive mark and re-direction to a competitor other than to take advantage of Complainant’s reputation in the BITMEX mark. In the absence of rights or legitimate interests, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the BITMEX mark from reflecting its mark in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without alternative explanation, registered 16 domain names that incorporate the BITMEX mark and redirected those domain names to the website of a competitor. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii).
The Panel finds Complainant has satisfied 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 <bitmexciom.com>, <bitmexom.com>, <bitmexe.com>, <bitmexregister.com>, <bitmexsignup.com>, <bitmexw.com>, <bitmexz.com>, <cbitmex.com>, <fbitmex.com>, <gbitmex.com>, <hbitmex.com>, <mbitmex.com>, <nbitmex.com>, <pbitmex.com>, <tbitmex.com>, and <bitmexte.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 22, 2019
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