HDR Global Trading Limited v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1908001855593
Complainant is HDR Global Trading Limited ("Complainant"), represented by J. Damon Ashcraft of Snell & Wilmer L.L.P., Arizona, USA. Respondent is Super Privacy Service LTD c/o Dynadot ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexnakamoto.com> registered with Dynadot, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2019; the Forum received payment on August 2, 2019.
On August 5, 2019, Dynadot, LLC confirmed by email to the Forum that the <bitmexnakamoto.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 August 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bitmexnakamoto.com. Also on August 6, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 August 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 owns a cryptocurrency trading platform and has used the BITMEX mark since 2014 in connection with financial trading platform services. Complainant claims that it is one of the most recognizable names in the cryptocurrency field; that its website receives tens of millions of page views per month; and that its annual trading volume is $1 trillion. Complainant owns a European Union trademark registration for BITMEX, registered in August 2017, and has trademark applications pending in other jurisdictions. Complainant recently began expanding its use of the BITMEX mark into related brands under the BITMEX NAKAMOTO mark, which it applied to register as a trademark in Hong Kong on July 19, 2019. (NAKAMOTO is a reference to the creator of the bitcoin cryptocurrency.)
Four days later, on July 23, 2019, Respondent registered the disputed domain name <bitmexnakamoto.com>. Since at least as early as July 30, 2019, the domain name has redirected users to a web page that offers to sell the domain name for US $3,900. Complainant states that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has never authorized or licensed Respondent to use its marks.
Complainant contends on the above grounds that the disputed domain name <bitmexnakamoto.com> is confusingly similar to its BITMEX mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <bitmexnakamoto.com> incorporates Complainant's registered BITMEX trademark, adding a name or pseudonym associated with Complaint's business and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., HDR Global Trading Ltd. v. Park Seung Chul, FA 1843184 (Forum June 19, 2019) (finding <bitmexbitcoin.com> confusingly similar to BITMEX). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for the sole apparent purpose of advertising the domain name itself for sale. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., HDR Global Trading Ltd. v. Super Privacy Service LTD c/o Dynadot, FA 1849606 (Forum July 29, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The factors set forth in paragraph 4(b) are not exhaustive; the totality of the circumstances must be considered in the assessment of bad faith, and the timing of the registration in particular may be such as to support an inference of bad faith intent. See, e.g., Citizens Financial Group, Inc. v. DOMAIN MAYBE FOR SALE c/o Dynadot, FA 1827738 (Forum Mar. 4, 2019) (finding bad faith where domain name incorporating registered trademark and corresponding to longer form mark that complainant had applied to register three days earlier).
As was the case in Citizens Financial Group, the disputed domain name here incorporates Complainant's registered mark and corresponds to a longer form mark for which Complainant submitted a trademark application only a few days earlier, and its sole apparent use has been to advertise the domain name itself for sale. Under the circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexnakamoto.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 30, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page