HDR Global Trading Limited v. emeka celestine
Claim Number: FA2201001981207
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is emeka celestine (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex-miners.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.
The Honorable Neil Anthony Brown QC 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 <bitmex-miners.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 January 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 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@bitmex-miners.com. Also on January 20, 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 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a cryptocurrency exchange. Complainant has rights in the BITMEX mark through its registrations with various trademark agencies throughout the world (e.g. World Intellectual Property Organization (“WIPO”) Reg. 1,514,704, registered Oct. 10, 2019; European Union Intellectual Property Office (“EUIPO”) Reg. 16,462,327, registered Aug. 11, 2017). See Compl. Exs. 1 – 5. Respondent’s <bitmex-miners.com> domain name is identical or confusingly similar to Complainant’s BITMEX mark as it incorporates the mark in its entirety and adds the word “-miners” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bitmex-miners.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passed off as Complainant in furtherance of a phishing scheme, and now inactively holding its resolving website.
Respondent registered and uses the <bitmex-miners.com> domain name in bad faith. Respondent passed off as Complainant in furtherance of a phishing scheme. Respondent inactively holds the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX mark. Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on January 21, 2022, Respondent sent to the Forum an email which stated , formal parts omitted,” Hello, i do not understand any of this sent to me.. please explain properly..Thanks”.
1. Complainant is a Seychelles company that operates a cryptocurrency exchange.
2. Complainant has established its trademark rights in the BITMEX mark through its registrations with various trademark agencies throughout the world (e.g. World Intellectual Property Organization (“WIPO”) Reg. 1,514,704, registered Oct. 10, 2019; European Union Intellectual Property Office (“EUIPO”) Reg. 16,462,327, registered Aug. 11, 2017).
3. Respondent registered the <bitmex-miners.com> domain name on July 4, 2021.
4. Respondent has used the domain name to pass itself off as Complainant in furtherance of a phishing scheme, and is now inactively holding the resolving website. The evidence therefore shows that Respondent does not have a right or legitimate interest in the domain name and that it registered and has used 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the BITMEX mark through its registrations with various trademark agencies throughout the world (e.g. WIPO Reg. 1,514,704, registered Oct. 10, 2019; EUIPO Reg. 16,462,327, registered Aug. 11, 2017). See Compl. Exs. 1 – 5. Registration with multiple trademark agencies is generally sufficieint in establishing rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has established its rights in the BITMEX mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITMEX mark. Complainant argues Respondent’s <bitmex-miners.com> domain name is identical or confusingly similar to Complainant’s BITMEX mark. Under Policy ¶ 4(a)(i), adding a hyphen and a generic or descriptive word along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark ,and appends the ‘.com’ top-level domain.”). Respondent’s domain name incorporates the BITMEX mark and adds the generic word “miners” and the “.com” gTLD, thus clearly invoking Complainant’s BITMEX mark and the implication that the domain name and any resolving website will deal with Complainant’s relationship with cryptocurrency mining. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BITMEX mark and to use it in its domain name, adding the generic word “miners” to the mark which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <bitmex-miners.com> domain name on July 4, 2021;
(c) Respondent has used the domain name to pass itself off as Complainant in furtherance of a phishing scheme, and is now inactively holding the resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <bitmex-miners.com> domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Emeka Celestine”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <bitmex-miners.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). The disputed domain name’s resolving website currently contains no substantive content. See Compl. Ex. 17. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii);
(g) Complainant argues that Respondent does not use the <bitmex-miners.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and offer competing services in order to phish for user information is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicing the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Complainant provides screenshots of the disputed domain name’s previous resolving website, which offered cryptocurrency services with Complainant’s mark in what Complainant submits is a phishing scheme to harvest sensitive user information. See Compl. Ex. 14. The Panel agrees and therefore finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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, other than the aforesaid email which does not purport to rebut that prima facie case, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name. In that regard, the Panel has considered the email of January 21, 2022 and finds that the papers served on Respondent make perfectly clear the substance and the detail of the claim made against it in the Complaint as the registered domain name holder.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bitmex-miners.com> domain name in bad faith. Under Policy ¶ 4(b)(iv), a respondent using a disputed domain name to pass itself off as a complainant and to offer competing services in furtherance of a phishing scheme, is evidence of bad faith registration and use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel recalls Complainant’s screenshots of the disputed domain name’s previous resolving website, which offered cryptocurrency services with Complainant’s mark in what Complainant submits is a phishing scheme to harvest sensitive user information. See Compl. Ex. 14. Therefore, as the Panel agrees, it finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent currently uses the <bitmex-miners.com> domain name in bad faith. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name’s resolving website may be evidence of bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots of the disputed domain name’s current resolving website, which features no content. See Compl. Ex. 17. Therefore, as the Panel agrees, it finds Respondent uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <bitmex-miners.com> domain name with actual knowledge of Complainant’s rights in the BITMEX mark. Under Policy ¶ 4(a)(iii), bad faith actual knowledge may be demonstrated by incorporation of a well-known/registered mark into a disputed domain name. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel recalls that the disputed domain name incorporates Complainant’s BITMEX mark in its entirety, as well as Complainant’s screenshots of the disputed domain name’s previous resolving website, which featured competing services and Complainant’s mark. See Compl. Ex. 14. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent failed to respond to its cease-and-desist letter. Failure to respond to a cease-and-desist may demonstrate bad faith under Policy ¶ 4(a)(iii). 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 cease-and-desist messages it sent to Respondent and submits that Respondent has not replied. See Compl. Exs. 15 and 16. Therefore, as the Panel agrees, it finds bad faith on behalf of Respondent under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BITMEX mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-miners.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: February 16, 2022
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