HDR Global Trading Limited v. Manikanta Gajula / Security Tech
Claim Number: FA2007001902518
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Manikanta Gajula / Security Tech (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex-trading-bot.com>, registered with NameCheap, Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2020; the Forum received payment on July 1, 2020.
On July 1, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmex-trading-bot.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2020 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-trading-bot.com. Also on July 2, 2020, 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 July 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. 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 multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 016462327, registered November 8, 2017).
2. Respondent’s <bitmex-trading-bot.com>[i] domain name is identical or confusingly similar to Complainant’s BITMEX mark as it contains the BITMEX mark in its entirety and merely adds the terms “trading,” "bot", and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <bitmex-trading-bot.com> domain name. Respondent does not conduct any business under the BITMEX mark, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX mark.
4. Respondent fails to use the <bitmex-trading-bot.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to offer a "bot" which enables users to operate two accounts simultaneously on Complainant's trading platform, in violation of Complainant's terms of service and disrupting Complainant's business.
5. Respondent uses the domain name to compete with Complainant.
6. Respondent registered and uses the <bitmex-trading-bot.com> domain name in bad faith. Respondent uses the domain name to use a bot to disrupt Complainant's services and in violation of Complainant's terms of service.
7. Respondent registered the <bitmex-trading-bot.com> domain name with actual knowledge of Complainant’s rights in the BITMEX mark based on Respondent’s use of the BITMEX marks on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITMEX mark. Respondent’s domain name is confusingly similar to Complainant’s BITMEX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bitmex-trading-bot.com> domain name and that Respondent registered and uses the 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 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 asserts rights in the BITMEX mark through its registration of the mark with the multiple trademark agencies, including the EUIPO (e.g. Reg. No. 016462327, registered November 8, 2017). See Amend. Compl. Annex 1. 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.”). Therefore, the Panel may find Complainant has demonstrated rights in the BITMEX mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <bitmex-trading-bot.com>domain name is identical or confusingly similar to Complainant’s BITMEX mark as it contains the BITMEX mark in its entirety and merely adds the terms “trading,” "bot", 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). Therefore, the <bitmex-trading-bot.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <coyote-shipping.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <bitmex-trading-bot.com> domain name. WHOIS information may be used to determine whether a respondent is commonly known by a 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 mark may indicate that the respondent is not commonly known by a 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 domain name lists the registrant as “Manikanta Gajula/Security Tech,” and the evidence shows that Respondent does not conduct any business under the BITMEX mark, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX mark. Therefore, the Panel holds that Respondent is not commonly known by the <bitmex-trading-bot.com> domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the <bitmex-trading-bot.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to offer a "bot" which enables users to operate two accounts simultaneously on Complainant's trading platform, in violation of Complainant's terms of service and disrupting Complainant's business. The use of a domain name incorporating a complainant’s mark to violate the terms of service of a complainant's platform is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides screenshots of the resolving webpage which offers bot services to enable users to operate multiple accounts simultaneously on Complainant's trading platform. The evidence shows that this use violates Complainant's Terms of Service. The Panel therefore finds Respondent is not using the <bitmex-trading-bot.com> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent's use of the resolving website is not a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent competes with Complainant's business. The offering of competing good or services by a respondent misusing the mark of a complainant does not constitute a bona fide offering of goods or services or 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).”). The Panel agrees that Respondent's bot services compete with Complainant's cryptocurrency trading services. Thus, Respondent does not use the <bitmex-trading-bot.com> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <bitmex-trading-bot.com> domain name in bad faith as Respondent uses the domain name to use a bot to disrupt Complainant's services and in violation of Complainant's terms of service. The use of a domain name to violate the terms of service of a complainant's platform can be evidence of bad faith registration and use if the domain name incorporates the complainant’s mark. See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of a domain name for activity that violated the complainant’s terms of service to constitute bad faith use and registration under the Policy); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant argues that the bot services offered by Respondent disrupt Complainant's business and violate the terms of service. The Panel agrees and holds that Respondent registered and uses the <bitmex-trading-bot.com> domain names in bad faith per Policy ¶ 4(b)(iii).
Finally, Complainant argues Respondent registered the <bitmex-trading-bot.com> domain name with actual knowledge of Complainant’s rights in the BITMEX mark based on Respondent’s use of the BITMEX marks. Unauthorized use of a complainant’s mark on a respondent’s webpage can demonstrate actual knowledge of a complainant’s rights in a mark 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”). Complainant argues that Respondent’s use of the BITMEX on the resolving webpage mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the <bitmex-trading-bot.com> domain name. Thus, Respondent registered the <bitmex-trading-bot.com> domain name in bad faith 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 <bitmex-trading-bot.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 31, 2020
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