HDR Global Trading Limited v. ben zhu
Claim Number: FA2201001981201
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is ben zhu (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexx2.net>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2022; the Forum received payment on January 20, 2022.
On January 20, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmexx2.net> 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 January 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2022 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@bitmexx2.net. Also on January 21, 2022, 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 February 16, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BITMEX mark established by its ownership of its portfolio of service mark registrations described below and its use of the mark in its financial services business since it was established in 2014.
Complainant submits that it owns and operates a cryptocurrency-based virtual trading platform marketed to millions of consumers around the world offering financial trading services in the field of digitized assets such as bitcoins, cryptocurrency, digital tokens, virtual currency, and digital currencies in five languages. Complainant asserts that its business has grown to average between $1 billion and $5 billion of trading volume per day and it has become one of the largest trading platforms in the world.
Complainant argues that the disputed domain name contains its BITMEX mark in its entirety and it is therefore confusingly similar to the service mark in which it has rights.
Further, the addition of the generic Top-Level Domain (“gTLD”) suffix <.net> does nothing to distinguish the disputed domain name from the BITMEX mark. Citing Axis AB v. Roger Ralston, Directview Holdings, Inc., Case No. D2018-2058 (WIPO Nov. 13, 2018) (“Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (‘gTLD’) . . . may be typically disregard for purposes of consideration of confusing similarity between a trademark and a domain name.”).
The Complaint contends that the additions of the letter “x” and number “2” do not obviate a finding of confusing similarity between the disputed domain and the BITMEX mark and submit that prior panels established under the Policy have held that the addition of numbers or letters to a complainant’s trademark did not sufficiently distinguish a disputed domain where the registrant added the number to the complainant’s trademark. Citing xHamster IP Holdings Ltd v. Chong Wang, WIPO Case No. D2019-3129 (“Excluding the Top-Level Domain ‘.com’, the disputed domain name ‘xhamster3’ is composed of the Complainant’s trademark XHAMSTER and the number ‘3’. The addition of a generic letter or number such as ‘3’ is insufficient to remove the confusingly similarity to the Complainant’s trademark. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.”)
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed Respondent to use the BITMEX mark. Therefore Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Referring to an screen capture exhibited in a cease and desist sent by Complainant’s agent to the registrant of the disputed domain name in July 2021, Complainant submits that the disputed domain previously resolved to a webpage offering competing cryptocurrency trading services. See DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne, WIPO Case No. D2018-2565 (WIPO Dec. 20, 2022) (“It is clear from the evidence that the Respondent has used the site attached to the Domain Name to point to competing services which are not connected with the Complainant. The usage of the Complainant’s DPD mark and its box logo which has a reputation in relation to parcel delivery services by the Respondent for similar services as the Complainant is not fair as the site does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services. ”).
Complainant adds that as of the date of filing of this Complaint, the disputed domain resolved to an inactive page and submits prior panels have held that a respondent did not use a disputed domain in connection with a bona fide offering of goods or services when a domain name in issue resolved to an inactive website. Citing, Renault SAS v. WhoisGuard, Inc. / Jota Tresele, D2020-2081 (WIPO Oct. 1, 2020) (“The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Domain Name resolves to an inactive page. The Panel finds that the Complainant has made out an unrebutted prima facie case.”).
Furthermore, Complainant submits Respondent is not known by the disputed domain name and alleges that Respondent registered and is using the disputed domain name in an attempt to confuse consumers as to the source and/or ownership of the disputed domain name.
Complainant adds that Respondent registered the disputed domain name through a privacy service and use of a privacy service to conceal Respondent’s identity suggests that Respondent is not commonly known by the disputed domain.
Complainant then asserts that it has spent years building its cryptocurrency trading platform and has acquired protectable rights in the BITMEX mark which is now recognized internationally and submits that the disputed domain name was registered and is being used in bad faith to capitalize on the goodwill associated with Complainant’s rights in the BITMEX Marks by attempting to confuse consumers as to the source and/or ownership of the disputed domain name.
Complainant refers to a number of decisions of panels established under the Policy were the panelists have held that its BITMEX mark is distinctive.
Complainant further asserts that when Respondent registered the disputed domain name, Respondent had actual knowledge of Complainant’s rights in the BITMEX marks and BITMEX logo, as shown by Respondent’s use of the BITMEX mark in the disputed domain name and has previously displayed the BITMEX logo on the website.
Complainant complains that despite Respondent’s actual knowledge of Complainant and BITMEX marks and BITMEX logo, Respondent proceeded to register the disputed domain name, and submits that a respondent’s actual knowledge of a complainant’s trademark when registering a domain name which incorporates that trademark demonstrates bad faith. See, e.g., Valio Oy v. Muhammad Tayab, Dairy Engineering Int’l, D2017-2376 (WIPO Feb. 5, 2018) (“Respondent is highly likely to have had actual knowledge of Complainant’s famous VALIO mark, as evidenced by Respondent’s use of the identical mark in the disputed domain name. The fact that Respondent registered a domain name which incorporates the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith.”).
Further, referring to a screen capture annexed to the Complaint, Complainant submits that as of the date of filing, the disputed domain name resolved to an inactive page. Prior panels have held that a disputed domain was registered and being used in bad faith when the disputed domain resolved to an inactive website. Citing Bollore v. Mohammadali Mokhtari, DIR2018-0014 (WIPO Sept. 4, 2018) (“The Complainant’s evidence at Annex 6 to the Complaint shows that the trade mark BOLLORE has a substantial and widespread reputation throughout the world. In the absence of a Response the Panel accepts this evidence. The Complainant submits that given the international reputation of the trade mark the Respondent must have registered the disputed domain name with knowledge of the Complainant and its rights. The Complainant also submits that this combined with an inactive website has been held to support a finding of bad faith. . . . . In these circumstances, with no evidence to the contrary, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.”).
Complainant further contends that the inactivity of the disputed domain name constitutes passive holding by Respondent of the disputed domain name which demonstrates bad faith use. Citing Telstra v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that the respondent’s passive holding of a domain name is evidence of no legitimate use and use in bad faith).
Complainant adds that its agent has sent two cease and desist letters to the Respondent which remained unanswered when this Complaint was filed.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is engaged in financial services under the BITMEX mark and has provided evidence in the English language of its ownership of the following trademark registration:
· European Union Trade Mark BITMEX, registration number 016462327, registered on August 11, 2017 for services in class 36;
· Korean registered service mark BITMEX, registration number 40-2017-142879, registered on March 29, 2019 for services in class 36
Complainant has an established Internet presence and maintains a website at <www.bitmex.com> which contains its cryptocurrency trading platform.
The record shows that the disputed domain name was registered on June 24, 2021 and does not resolve to any active website.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
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 has provided uncontested evidence of its rights in the BITMEX mark established by its portfolio of trademark registrations and extensive use of the mark in its financial services business with trading volumes in the amount of $5 billion per day.
The disputed domain name <bitmexx2.net> consists of Complainant’s BITMEX mark in combination with the letter “x” and the number “2” and the gTLD <.net> extension. The BITMEX mark is presented in its entirety and is clearly identifiable within the disputed domain name. Neither the letter “x” nor the number “2” add any meaning or distinguishing character to the disputed domain name.
In the context of this proceeding that gTLD extension <.net> would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the BITMEX mark in which Complainant has rights.
The Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not known by the disputed domain name;
· Respondent registered the disputed domain name through a privacy service and use of a privacy service to conceal Respondent’s identity suggests that Respondent is not commonly known by the disputed domain.
· Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed to Respondent any rights regarding Complainant’s BITMEX mark;
· Complainant is passively holding the disputed domain name and as of the date of filing this Complaint, the disputed domain resolved to an inactive page but previously resolved to a webpage offering competing cryptocurrency trading services as shown in the screen capture annexed to the Complaint;
· Respondent registered and is using the disputed domain name in an attempt to confuse consumers as to the source and/or ownership of the disputed domain name.
· Respondent is not making a legitimate noncommercial or fair use of the disputed domain.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has provided uncontested convincing evidence that it has an extensive worldwide reputation in the use of the BITMEX mark on its products and services which at core is an Internet based crypto-currency trading platform.
The BITMEX mark, which is distinctive and a coined word, is the dominant element of the disputed domain name and in view of the reputation of Complainant online, it is improbable that the registrant would have chosen and registered the disputed domain name, without knowledge of Complainant, its crypto-currency trading platform and its BITMEX mark.
Complainant’s BITMEX mark is the dominant and only distinctive element of the disputed domain name and its use by Complainant, and accrued goodwill and reputation, predate the registration of the disputed domain name on June 24, 2021.
Complainant has provided, in the form of a screen capture, a copy of the inactive web page to which the disputed domain name presently resolves.
Complainant has also provided, a copy of the web page to which the disputed domain name resolved on July 1, 2021. This is adduced in the form of an exhibit in a cease and desist letter, which Complainant’s agent sent to Respondent on July 26, 2021. The web page was headed “BitMEXX Welcome to BitMEXX’s most advanced trading platform” in the English language and otherwise contains Arabic numerals and what Complainant states are Japanese characters.
Complainant has not provided a translation of the Japanese characters. The cease and desist letter, which remained unanswered as of the filing of this Complaint, alleged that the Japanese characters purported to provide an offering of cryptocurrency trading services. In the absence of a translation this Panel cannot find that the disputed domain name was used on July 1, 2021 to offer cryptocurrency services as alleged.
However in the circumstances of this case, taking into account, the similarity of the disputed domain name and Complainant’s BITMEX mark, Complainant’s extensive reputation and goodwill established for its online cryptocurrency platform, the improbability that the disputed domain name was registered for any reason other than to take predatory advantage of Complainant’s mark, name and business, the fact that Respondent has availed of a privacy service to conceal his identity on the published WhoIs, and that Respondent has not responded to the notice of this Complaint or the cease and desist letters sent by Complainant, this Panel finds that the passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain names was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <bitmexx2.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 17, 2022
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