Bitmain Technologies Limited v. Henry Torres
Claim Number: FA2202001985307
Complainant is Bitmain Technologies Limited (“Complainant”), represented by HE Wei of Han Kun (Shenzhen) Law Offices, China. Respondent is Henry Torres (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmain.co.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2022; the Forum received payment on February 28, 2022.
On February 22, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmain.co.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 March 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@bitmain.co.com. Also on March 4, 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 March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a leading technology company, offering products including chips, servers, and cloud solutions, which are mainly used in the fields of blockchain and artificial intelligence. Complainant and its affiliates have places of business in China, Singapore, the United States, and other regions. Complainant asserts rights in the BITMAIN mark through its registration of the mark with multiple trademark agencies around the world, including in the United States in 2016.
Complainant alleges that the disputed domain name is identical or confusingly similar to its BITMAIN mark, as it incorporates the mark in its entirety, merely adding the two letters “co”, which is a common abbreviation for the generic term company, and the “.com” generic top-level domain (gTLD).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the BITMAIN mark, nor is Respondent commonly known by the disputed domain name. Respondent does not use the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant: the resolving website mimics Complainant’s legitimate website and purports to offer for sale Complainant’s products. In particular, the company profile under the “ABOUT US” column of the resolving website copies almost all the content from the “ABOUT US” column of Complainant’s legitimate website, and proclaims to be “Bitmain Technology Holding Company”; the Privacy Policy of the resolving website is almost identical to that of Complainant; and the resolving website’s footer displays “© BITMAIN TECHNOLOGY. 2021. All Rights Reserved”.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by purporting to sell Complainant’s products. Respondent also attempts to attract users for commercial gain by passing off as Complainant. Further, Respondent had actual and/or constructive notice of Complainant’s rights in the mark, evidenced by Respondent’s copying of portions of Complainant’s website, as well as by purporting to offer Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BITMAIN and uses it to market computer products.
Complainant’s rights in its mark date back to at least 2016.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website mimics Complainant’s legitimate website, displaying content copied from Complainant’s website and purporting to sell Complainant’s products.
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 disputed domain name incorporates Complainant’s BITMAIN mark in its entirety, merely adding term “co” (a common abbreviation for “company”) and the “.com” gTLD. Merely adding a few letters to a mark, especially letters that stand for an abbreviated word, and a gTLD is generally not enough to differentiate a disputed domain name from a mark. See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i)); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The Panel therefore finds that the <bitmain.co.com> domain name is confusingly similar to Complainant’s BITMAIN mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its BITMAIN mark. Respondent is not commonly known by the disputed domain name: the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed 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). Here, the WHOIS information shows that the registrant is known as “Henry Torres”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The resolving website mimics Complainant’s legitimate website, attempting to pass off as Complainant and purporting to sell Complainant’s products. Using a disputed domain name to pass off as a complainant and offer a complainant’s products for sale does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website attempts to pass off as Complainant for the commercial gain of Respondent, purporting to sell Complainant’s products. Using a disputed domain name to resolve to a website that mimics complainant’s and offers similar products for the respondent’s commercial gain may constitute bad faith. 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. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”). The Panel therefore finds that Respondent acted in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website mimics Complainant’s legitimate website, displaying copies of portions of Complainant’s website, and purports to offer for sale Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <bitmain.co.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 30, 2022
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