HDR Global Trading Limited v. Milen Radumilo
Claim Number: FA1908001859583
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitcoin-bitmex.com>, registered with Domain Locale, 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 27, 2019; the Forum received payment on August 27, 2019.
On August 28, 2019, Domain Locale, LLC confirmed by e-mail to the Forum that the <bitcoin-bitmex.com> domain name is registered with Domain Locale, LLC and that Respondent is the current registrant of the name. Domain Locale, LLC has verified that Respondent is bound by the Domain Locale, 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 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@bitcoin-bitmex.com. Also on August 29, 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 Petter Rindforth as Panelist.
On September 30, 2019, pursuant to Rule 12 of the Policy, the Panel issued an Order for Additional Submissions and Extending Time, asking the Complainant to complete the Complaint, on or before October 4, 2019, with full details of the referred European Union Trademark registration No 016462327 BITMEX. Complainant’s response to the Panel Order was timely received by the Forum on September 30, 2019.
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 owns and operates a leading and prominent cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX trademark through its registration of the trademark with the multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016462327, registered August 11, 2017).
Respondent’s <bitcoin-bitmex.com> domain name is identical or confusingly similar to Complainant’s BITMEX trademark as it contains the BITMEX trademark in its entirety and merely adds the term “bitcoin-” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bitcoin-bitmex.com> domain name. Respondent does not conduct any business under the BITMEX trademark, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX trademark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent displays hyperlinks on the resolving webpage, one of which was labeled “Click Here to Buy This Domain.”
Respondent registered and uses the <bitcoin-bitmex.com> domain name in bad faith. Respondent uses the disputed domain name to display a link that offers the disputed domain name for sale. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX trademark based on Respondent’s use of the BITMEX trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the European Union Trade Mark No. 016462327 BITMEX (word), registered August 11, 2017 for services in class 36.
Respondent registered the <bitcoin-bitmex.com> domain name on August 16, 2019.
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 asserts rights in the BITMEX trademark through its registration of the trademark at EUIPO (e.g. Reg. No. 016462327, registered August 11, 2017). Registration of a trademark at the EUIPO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See 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.”). Therefore, the Panel finds that Complainant has demonstrated rights in the BITMEX trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bitcoin-bitmex.com> domain name is identical or confusingly similar to Complainant’s BITMEX trademark as it contains the BITMEX trademark in its entirety and merely adds the term “bitcoin-” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). In this case, the term “bitcoin-“ only clearly describe the goods and services directly related to the Complainant’s trademark BITMEX. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per 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 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <bitcoin-bitmex.com> domain name. Respondent does not conduct any business under the BITMEX trademark, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Milen Radumilo,” and there is no other evidence to suggest that Respondent was authorized to use the BITMEX trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent displays hyperlinks on the resolving webpage, one of which was labeled “Click Here to Buy This Domain.” Where a respondent’s only use of a disputed domain name is to solicit offers to purchase the domain name, this indicates that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Respondent has failed to make any active use of the <mellosolar.com> domain name since it was registered, with the exception that the domain name is employed by Respondent to solicit offers to purchase it. Such substantively inactive use is, in the circumstances described in the Complainant, neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays hyperlinks along with the message “Click Here to Buy this Domain Name.” The Panel may therefore clearly finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <bitcoin-bitmex.com> domain name in bad faith. As noted above, Respondent uses the disputed domain name to display a link that offers the disputed domain name for sale. Registration of a confusingly similar domain name with the intent to sell the disputed domain name can indeed evince bad faith registration and use per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). The Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Finally, Complainant argues that Respondent registered the <bitcoin-bitmex.com> domain name with actual knowledge of Complainant’s rights in the BITMEX trademark based on Respondent’s use of the BITMEX trademark. Use of a trademark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a trademark per Policy ¶ 4(a)(iii). 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”). The Panel agrees, also taking into consideration the fact that the disputed domain name is a clear combination of the Complainant’s goods/services, together with the Complainant’s trademark, and find that Respondent had actual knowledge of Complainant’s rights in the BITMEX trademark prior to registering the disputed domain name, thus constituting bad faith registration per 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 <bitcoin-bitmex.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 4, 2019
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