HDR Global Trading Limited v. John Hanks
Claim Number: FA1906001848688
Complainant is HDR Global Trading Limited (“Complainant”), represented by J. Damon Ashcraft of Snell & Wlimer LLP, Arizona, USA. Respondent is John Hanks (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.blog>, registered with united-domains AG.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2019; the Forum received payment on June 19, 2019.
On June 26, 2019, united-domains AG confirmed by e-mail to the Forum that the <bitmex.blog> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG 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 June 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2019 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.blog. Also on June 27, 2019, 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 July 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable 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 owns and operates a leading and prominent cryptocurrency-based virtual trading platform marketed to millions of consumers around the world. Complainant has rights in the BITMEX mark through its registration of the mark with the European Union Intellectual Property Organization (“EUIPO”) (e.g. Reg. No. 16462327, registered Nov. 8, 2017). See Compl. Ex. 1. Respondent’s <bitmex.blog> domain name is identical or confusingly similar to Complainant’s mark as it merely appends the “.blog” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitmex.blog> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent merely uses the domain name to redirect users to Complainant’s own legitimate website. See Compl. Exs. 8A and 13. Additionally, Respondent only registered the domain name is to sell it to Complainant for profit. See Compl. Ex. 7.
Respondent registered and uses the <bitmex.blog> domain name in bad faith as Respondent has offered to sell the domain name to Complainant on numerous occasions. See Compl. Ex. 7. Additionally, Respondent registered the domain name to capitalize on the goodwill associated with its mark by redirecting users to Complainant’s own legitimate website. See Compl. Exs. 8A and 13. Moreover, Respondent had knowledge of Complainant’s rights in the BITMEX mark at the time of registration given Respondent’s use of the domain name to redirect users to Complainant’s own website. Id.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a company incorporated in the Republic of Seychelles that owns and operates a leading and prominent cryptocurrency-based virtual trading platform marketed to millions of consumers around the world.
2. Complainant has established its trademark rights in the BITMEX mark through its registration of the mark with the European Union Intellectual Property Organization (“EUIPO”) (e.g. Reg. No. 16462327, registered Nov. 8, 2017).
3. Respondent registered the <bitmex.blog> domain name on January 12, 2018.
4. Respondent registered the domain name with the intention of selling it to Complainant for profit and uses it to redirect users to Complainant’s own legitimate website.
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 claims rights in the BITMEX mark through its registration of the mark with the EUIPO (e.g. Reg. No. 16462327, registered Nov. 8, 2017). See Compl. Ex. 1. Registration of a mark with the EUIPO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established its trademark rights in the BITMEX mark for the purposes of 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 that Respondent’s <bitmex.blog> domain name is identical or confusingly similar to Complainant’s mark as it merely appends the “.blog” gTLD. The addition of a gTLD to a recognized mark generally fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”). The Panel therefore finds that the <bitmex.blog> domain name is identical or confusingly similar to the BITMEX 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 trademark and to use it in its domain name in its entirety;
(b) Respondent registered the <bitmex.blog> domain name on January 12, 2018;
(c) Respondent registered the domain name with the intention of selling it to Complainant for profit and uses it to redirect users to Complainant’s own legitimate website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <bitmex.blog> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. 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); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “John Hanks” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel finds that Respondent is not commonly known by the <bitmex.blog> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent merely uses the domain name to redirect users to Complainant’s own legitimate website. Using a confusingly similar domain name that resolves in a complainant’s own webpage generally fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Google LLC v. Tim Sales, FA 1363660 (Forum Jan. 31, 2018) (“[T]he Panel finds that Respondent is using the <googlesalessupport.com> domain name to redirect Internet users to Complainant’s website and finds that Respondent lacks rights and legitimate interests in the domain name.”). Complainant provides a screenshot of the alleged resolving webpage, which displays the BITMEX mark/logo at the top of the page and provides a table for “Q3 2019 Quarterly Futures Listings.” See Compl. Ex. 13. Complainant also provides a Declaration from Tyler J. Fortner, an attorney, who states that he “observed that the Disputed Domain directed users to Complainant’s own blog website located at the domain <blog.bitmex.com>.” See Compl. Ex. 8. As such, the Panel finds that Respondent’s use of the domain name to resolve to Complainant’s own website provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii);
(g) Complainant argues that Respondent offers to sell the domain name directly to Complainant. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the email it received from Respondent, which shows that Respondent would “like to sell the domain for 1 BTC of your best offer.” See Compl. Ex. 7. As such, the Panel agrees and finds that Respondent offered to sell the disputed domain name to Complainant, indicative of possessing no rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).
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 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 claims that Respondent registered and uses the <bitmex.blog> domain name in bad faith as Respondent has offered to sell the domain name to Complainant on numerous occasions. Offering to sell a confusingly similar domain name to a complainant can evince bad faith under the Policy. See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Once again, Complainant provides a copy of the email it received from Respondent, which shows that Respondent would “like to sell the domain for 1 BTC of your best offer.” See Compl. Ex. 7. As such, the Panel is persuaded that Respondent’s offering of the domain name for sale directly to the Complainant is evidence of bad faith Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent registered the domain name to capitalize on the goodwill associated with its mark to redirect users to Complainant’s own website. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark and redirect users to a complainant’s own website can evince bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."); see also Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). As noted above, Complainant provides a screenshot of the alleged resolving webpage, which displays the BITMEX mark/logo at the top of the page and provides a table for “Q3 2019 Quarterly Futures Listings.” See Compl. Ex. 13. Complainant also provides a Declaration from Tyler J. Fortner, an attorney, who states that he “observed that the Disputed Domain directed users to Complainant’s own blog website located at the domain <blog.bitmex.com>.” See Compl. Ex. 8. Accordingly, as the Panel agrees, the Panel finds that Respondent attempted to trade off the goodwill associated with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s BITMEX mark at the time of registering the <bitmex.blog> domain name. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can provide adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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”). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s use of the domain name to redirect users to Complainant’s own website. See Compl. Exs. 8A and 13. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, 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 disputed 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.blog> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 23, 2019
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