Hashkey Digital Asset Group Limited v. a12222222
Claim Number: FA2109001965048
Complainant is Hashkey Digital Asset Group Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, Arizona, USA. Respondent is a12222222 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hashkeyhub.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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 September 24, 2021; the Forum received payment on September 24, 2021. The Complaint was received in both Vietnamese and English.
On September 25, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <hashkeyhub.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 October 4, 2021, the Forum served the Chinese Language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of October 25, 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@hashkeyhub.com. Also, on October 4, 2021, the Chinese and English Language 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 October 28, 2021, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby making this the language of the proceedings pursuant to Rule 11(a). Complainant has submitted a Chinese language version of its Complaint thus satisfying the language requirement of the Rules. As the Chinese language Complaint has been served upon Respondent (along with an English language version) but it has filed no Response or made any other submission in this case, the Panel feels it appropriate to exercise its discretion, under Rules 10(b) and (c) and determine that the remainder of the proceedings may be conducted in English so as to spare Complainant the further expense and delay of translating this decision into the English language in which it primarily operates. In further support of its decision, the Panel notes that the disputed domain name is comprised of words in the English language and resolves to a website that appears entirely in English. As such, it is determined that conducting the remainder of these proceedings in English will not result in any prejudice to the Respondent.
A. Complainant
Complainant offers digital asset management and financial technology services in the blockchain and fintech industries for institutions, offices, funds, and professional investors. Complainant owns rights in the trademark HASHKEY based on its use in commerce since 2018 and through its registrations with multiple trademark agencies (e.g. China’s State Administration for Industry and Commerce (“SAIC”) and the European Union’s Office for Harmonisation in the Internal Market (“OHIM”), such registrations having issued in mid and late 2019. Respondent’s <hashkeyhub.com> domain name, registered on March 27, 2021, is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the word “hub” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <hashkeyhub.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HASHKEY mark in any way. Respondent does not use the disputed domain name for a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof, but instead offers the domain name for sale at an inflated price.
Respondent registered and uses the <hashkeyhub.com> domain name in bad faith as Respondent offers the disputed domain name for sale. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the HASHKEY mark based on Complainant’s reputation and the fact that Respondent registered the disputed domain name only one day after Complainant filed a trademark application for the mark HASHKEY HUB in Singapore. Finally, Respondent failed to respond to Complainant’s cease-and-desist letter and follow-up letter.
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 evidence 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 claims rights in the HASHKEY mark through its registrations with the trademark agencies SAIC and OHIM. Registration with the SAIC and OHIM are sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (“Complainant has rights in the FIDELITY mark under Policy ¶ 4(a)(i) through registration with the SAIC”); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (“Registration with the OHIM is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).”). Complainant has submitted screenshots from the SAIC and OHIM websites evidencing the particulars of its claimed trademark registrations. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <hashkeyhub.com> domain name is identical or confusingly similar to the HASHKEY mark. Under Policy ¶ 4(a)(i), adding a generic word along with a “.com” gTLD is generally insufficient to differentiate a disputed domain name from the trademark it incorporates. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The disputed domain name incorporates Complainant’s HASHKEY mark in its entirety and adds the generic word “hub” along with the “.com” gTLD. This does not differentiate the <hashkeyhub.com> domain name from the HASHKEY mark and so the Panel finds that the disputed domain name is confusingly similar to such 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 is not commonly known by the <hashkeyhub.com> domain name, nor has Complainant authorized or licensed Respondent to use its HASHKEY mark in the disputed domain name. Under Policy ¶ 4(c)(ii) relevant WHOIS information, or the lack thereof, may inform the inquiry into whether a Respondent is commonly known by a disputed domain name. Further, a lack of evidence demonstrating otherwise may affirm a Complainant’s claim that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”); see also Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). As verified by the concerned Registrar, the WHOIS record for the <hashkeyhub.com> domain name lists “a12222222” as the registrant. It is clear that this bears no relation to the HASHKEY mark. Furthermore, Respondent has not participated in this case and there is otherwise nothing in the record to rebut Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not use the <hashkeyhub.com> domain name for any bona fide offering of goods or services and also that it does not make any legitimate noncommercial or fair use thereof. Under Policy ¶¶ 4(c)(i) and (iii), offering for sale on its resolving website at an inflated price a domain name that is confusingly similar to an asserted trademark, is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See CommScope, Inc. of North Carolina v. domain admin, FA 1964929 (Forum Oct. 25, 2021) (“The Panel further concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent offers the domain name for sale on the landing page to which the disputed domain name resolves. A general offer to sell a domain name can indicate a lack of rights or legitimate interests per Policy ¶ 4(a)(ii).”) Complainant provides screenshots of the disputed domain name’s resolving website, which lists the website for sale at a minimum price of USD $3,666. As Complainant has made a prima facie showing which has not been rebutted by Respondent, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <hashkeyhub.com> domain name with knowledge of Complainant’s rights in the HASHKEY mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient as a foundation upon which an argument of bad faith may be built, and this may be established through the reputation of a complainant’s mark, the use to which a disputed domain name is put, and other facts that indicate a respondent is specifically targeting a complainant’s mark rather than using the domain name in some other manner. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); Also see See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (section heading “Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”). Complainant asserts that its HASHKEY mark has gained significant consumer recognition through its widespread use. In support, it provides copies of certain pages of its www.hashkey.com website, a 2018 Fund Prospectus for its business, a pamphlet from a symposium it sponsored in 2018, as well as a sampling of third-party news articles written about it in 2020 and in January and early March of 2021. While this evidence does support Complainant’s claim that its mark has gained a certain reputation, the Panel is also cognizant of the fact that the term “hash key” has at least two generic meanings as a button on a telephone dialing pad (sometimes also called the “pound sign”) and as a device used in blockchain technology when indexing a dataset. However, Complainant also submits a screenshot from the SAIC showing a March 26, 2021 trademark application for the phrase HASHKEY HUB. The fact that Respondent registered the <hashkeyhub.com> domain name the very next day, on March 27, 2021, strongly suggests that it did so opportunistically and with knowledge of Complainant’s rights in its mark. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Although there remains a small possibility that this confluence was mere coincidence, Respondent has chosen not to claim this defense by failing to participate in this case. Based upon a preponderance of the evidence before it, the Panel finds it more likely than not that Respondent registered the disputed domain name with actual knowledge of, and with an intent to target Complainant’s rights in the HASHKEY mark.
Next, Complainant argues that Respondent registered and uses the <hashkeyhub.com> domain name in bad faith by offering it for sale at an inflated price. Under Policy ¶ 4(b)(i), generally offering a disputed domain name for sale at a price in excess of its out-of-pocket costs directly related to the domain name may demonstrate bad faith registration and use. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”) Complainant’s screenshots of the disputed domain name’s resolving website display an offer to sell the domain name at a minimum price of USD $3,666. There is no evidence of Respondent’s out-of-pocket costs here or that it purchased the disputed domain name from a prior owner. However, the stated price is exponentially higher than typical domain name registration fees charged by registrars. In view of all of the facts and circumstances of this case, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also argues that Respondent’s failure to respond to its cease-and-desist letters evidences its bad faith. Under Policy ¶ 4(a)(iii), failure to respond to a cease-and-desist may demonstrate bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides screenshots of the letters it sent to Respondent, and claims that Respondent never replied. The Panel agrees and finds that Respondent’s failure to respond to Complainant’s letters further supports the above finding of 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 <hashkeyhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 1, 2021
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