HDR Global Trading Limited v. Javier Harrison
Claim Number: FA2011001920532
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, United States. Respondent is Javier Harrison (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexbtc.live>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2020; the Forum received payment on November 12, 2020.
On November 13, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmexbtc.live> 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@bitmexbtc.live. Also on November 16, 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 December 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant, HDR Global Trading Limited, owns and operates a cryptocurrency-based virtual trading platform. Complainant has rights in the trademark BITMEX based upon its use in commerce since 2014 and its registration with multiple trademark organizations, including the European Union Intellectual Property Office (“EUIPO”). Respondent’s <bitmexbtc.live> domain name, registered on October 21, 2020, is confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the abbreviation “btc” (a shorthand for the word “bitcoin”) and the “.live” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <bitmexbtc.live> domain name because Complainant has not authorized Respondent to use the BITMEX mark and Respondent is not known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent impersonates Complainant in furtherance of an advance-fee fraud scheme.
Respondent registered and uses the <bitmexbtc.live> domain name in bad faith. Respondent capitalizes on the goodwill associated with Complainant’s mark to perpetuate fraud. Additionally, Respondent made use of a privacy service to conceal its identity and failed to respond to Complainant’s two pre-complaint attempts at communication. Finally, Respondent had actual knowledge of Complainant’s rights in the BITMEX mark as shown by the nature of its use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 and submissions 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 and supported 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 based upon the registration with multiple trademark organizations, including the EUIPO. Registration of a mark with a national or regional trademark agency such as the EUIPO is generally considered to be a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides evidence of registration of the BITMEX mark in the form of images of its registration certificates as well as screen shots from certain trademark offices. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bitmexbtc.live> domain name is confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the abbreviation “btc” and the “.live” gTLD. Addition of a term or abbreviation and a gTLD to a mark is generally insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Here, Complainant notes that the added abbreviation “btc” refers to the word “bitcoin” which is a central component of Complainant’s cryptocurrency trading business. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BITMEX mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <bitmexbtc.live> domain name because Complainant has not authorized Respondent to use the BITMEX mark and Respondent is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Javier Harrison” and no information indicates that Respondent is known otherwise or that it is authorized to use the mark. In light of the available evidence, the panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <bitmexbtc.live> domain for any bona fide offering of goods or services or for a legitimate noncommercial or fair use but rather that it impersonates Complainant in furtherance of a fraudulent scheme. Use of a disputed domain name to pass oneself of as a complainant as part of a fraudulent scheme is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Facebook, Inc. v. Vitalii Gerasimov, D2020-1093 (WIPO July 6, 2020) (The disputed domain name is used “in connection with a fraudulent scheme that impersonates the Complainant’s founder and CEO by using his image in an effort to derive illegitimate financial gain from unsuspecting Internet users, misleading them to make advance payments in Bitcoin to the Respondent. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.”); see also Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”) Here, Complainant provides a screenshot of the <bitmexbtc.live> website to support its claim that Respondent uses the disputed domain name in connection with an advance-fee fraud scheme that impersonates Complainant to trick unsuspecting customers into sending bitcoin to Respondent. The page shows use of Complainant’s BITMEX logo as well as a claim that 10,000 Bitcoins will be given away for free. It invites users to send “from 0.05 BTC to 100 BTC to the contribution address and we will immediately send you back 0.1 BTC to 200 BTC (x2 back) to the address you sent it from.” This proposal does not seem reasonable to the Panel and Respondent has not filed a Response or made any other submission in this case to explain its actions or otherwise refute Complainant’s assertions. Therefore, as Complainant has made out a prima facie case and upon a preponderance of the evidence, the Panel finds that Respondent does not use the disputed domain name for 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 argues that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark. Actual knowledge of a complainant’s rights in a mark may act as evidence of bad faith registration and use under Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of a disputed domain name. 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 actual knowledge of Complainant’s rights in the BITMEX mark is evident from Respondent’s use of the mark in the disputed domain name and on the associated webpage – particularly use of Complainant’s logo – and the use of a Bitcoin-related fraud scheme. The Panel agrees that Respondent’s actual knowledge is clear from the facts of this case.
Next, Complainant argues that Respondent registered and uses the <bitmexbtc.live> domain name in bad faith because Respondent capitalizes on the goodwill associated with Complainant’s mark to perpetuate fraud. Passing oneself off as a complainant in connection with fraud is typically clear evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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 Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”) As previously noted, Complainant provides screenshots which show that Respondent uses the disputed domain in connection with an advance-fee fraud scheme that impersonates Complainant to trick unsuspecting customers into sending bitcoin to Respondent. Respondent has not denied this and it has not participated in this case in any manner. Thus, upon the undisputed evidence presented, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexbtc.live> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 10, 2020
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