HDR Global Trading Limited v. Johnson Elliot / Bitgo
Claim Number: FA2108001959525
Complainant is HDR Global Trading Limited (“Complainant”), represented by Anne M. Bolamperti of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Johnson Elliot / Bitgo (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmextradingoption.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.
On August 13, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmextradingoption.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 August 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 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@bitmextradingoption.com. Also on August 17, 2021, 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 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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
i) Complainant, HDR Global Trading Limited, owns and operates a cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 16,462,327, registered August 11, 2017). The disputed domain name is virtually identical and confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the generic terms “trading option” and the “.com” generic top-level domain (“gTLD”).
ii) 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 and Respondent is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent previously capitalized on Complainant’s reputation to redirect Internet traffic to a competing website and the domain now resolves to a suspended webpage.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent capitalized on the goodwill associated with Complainant’s mark for commercial gain. The disputed domain redirects users to a suspended webpage. Additionally, Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered the disputed domain name.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on May 11, 2021.
2. Complainant has established rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 16,462,327, registered August 11, 2017).
3. Respondent used the disputed domain name to redirect users to a site offering a competing cryptocurrency exchange platform service while displaying Complainant’s mark.
4. The disputed domain now resolves to a suspended webpage.
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 based upon the registration with multiple trademark organizations, including the EUIPO. Registration of a mark with a trademark agency 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 with the EUIPO (e.g., Reg. No. 16,462,327, registered August 11, 2017). Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is virtually identical and confusingly similar to Complainant’s BITMEX mark because it contains the mark in its entirety, merely adding the generic terms “trading option” and the “.com” gTLD. Addition of a generic term and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, 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), then the burden shifts to Respondent to show 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 disputed domain name because Complainant has not licensed or authorized Respondent to use the BITMEX mark and Respondent is not commonly known by the disputed domain name. When no response is submitted, 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, FA1505001620789 (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 “Johnson Elliot / Bitgo” and no information indicates that Complainant authorized Respondent to use the mark.
Complainant also argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent previously capitalized on Complainant’s reputation to redirect Internet traffic to a competing website. Use of a disputed domain name to redirect users to a respondent’s own webpage for commercial gain 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 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)). Complainant argues that, prior to this dispute, Respondent used the disputed domain name to redirect users to a site offering a cryptocurrency exchange platform service while displaying Complainant’s mark. Therefore, the Panel finds that Respondent is not using the 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).
Further, the disputed domain now resolves to a suspended webpage. Failure to make active use of a disputed domain name may suggest a lack of rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the webpage resolving at the disputed domain, which displays the message “This Account has been suspended.”
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent capitalized on the goodwill associated with Complainant’s mark for commercial gain. Use of a disputed domain name to attract Internet users to a competing webpage for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iii) and/or (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that, prior to this dispute, Respondent used the disputed domain name to redirect users to a site offering a competing cryptocurrency exchange platform service while displaying Complainant’s mark. Thus, the Panel finds Respondent’s bad faith use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant also notes that the disputed domain redirects users to a suspended webpage in bad faith. Failure to make active use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the webpage resolving at the disputed domain, which displays the message “This Account has been suspended.” Complainant also suggests that the account was likely suspended due to fraudulent activity. The Panel therefore finds Respondent’s bad faith use of the disputed domain name under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered the disputed domain name. 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”); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant argues that Respondent had knowledge of Complainant’s rights in the BITMEX mark based on the distinctive nature of the mark and Respondent’s use of the domain to display Complainant’s mark in connection with competing services. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered the disputed domain name, and thus it finds that Respondent registered the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmextradingoption.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: September 13, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page