HDR Global Trading Limited v. DOMAIN PLD
Claim Number: FA2002001883541
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of Snell & Wilmer L.L.P., Arizona. Respondent is DOMAIN PLD (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <bitmexsignal.com> and <bitmexsignals.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2020; the Forum received payment on February 17, 2020.
On February 18, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <bitmexsignal.com> and <bitmexsignals.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@bitmexsignal.com, postmaster@bitmexsignals.com. Also on February 18, 2020, 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 13, 2020 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 domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it owns and operates a cryptocurrency-based virtual trading platform marketed to millions of consumers around the world in five languages. Since its inception in 2014, Complainant’s business has grown to average between $1 billion to $5 billion of trading volume per day, with an annual trading volume of $1 trillion.
Complainant has a strong Internet presence through its numerous registered domains, including <bitmex.com>, <bitmex.finance>, <bitmex.financial), <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
Complainant submits that both of the disputed domain names <bitmexsignal.com> and <bitmexsignals.com> are confusingly similar to its BITMEX mark, arguing that each contains Complainant's BITMEX mark in its entirety and submits that it is well-settled that where a domain name includes an identical match to a complainant's mark, the complainant satisfies the burden of proving that the domain name is identical or confusingly similar under the Policy. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163. Indeed, prior UDRP decisions have held that "when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy."
Complainant adds that the addition of the words "signal" and "signals" to “bitmex" in the disputed domain names does not serve to decrease this confusion. Previous decisions under the Policy have held that the addition of the terms "signal" or "signals" to a domain name that otherwise completely incorporates a complainant's mark is insufficient to avoid a finding of confusing similarity as such terms are merely descriptive of the complainant's services. See Barclays Bank PLC v. UFXBanlr/Domains By Proxy, LLC,WIPO Case No. D2012-1215 (agreeing with the complainant that the inclusion of the word “signals" in <barclayssignals.com> "does not nullify concerns that the Domain Name is identical or confusingly similar to the Complainant's registered trade mark....").
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain names arguing that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not authorized or licensed any rights in Complainant's BITMEX marks to Respondent.
Additionally, Complainant alleges that Respondent does not conduct any business, legitimate or otherwise, under the BITMEX marks or any similar marks. From at least as early as December 10, 2019, the disputed domain names directed users to a website that, prominently displaying Complainant's BITMEX marks, offered margin trading services similar to those offered by Complainant and continued so to do on the date on which this Complaint was made. Prior decisions under the Policy have held that a respondent has no rights or legitimate interests when using a domain name "to redirect users to a competing... website and to a web page prominently carrying the Complainant's [registered trademark]." See Realm Entertainment Limited v. Domains By Proxy, LLC/Engin Talih, WIPO Case No. D2015-1858.
Furthermore, Complainant submits that previous decisions under the Policy have held that where domain name "completely incorporates the Complainant's mark" such use does not constitute a bona fide commercial or fair use for the purposes of the Policy. See Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., D2002-0758, (WIPO Oct. 4, 2002).
Complainant submits that the disputed domain names were registered, and are being used, in bad faith, arguing that it is not possible to conceive of a plausible situation in which Respondent would have been unaware of the Complainant's BITMEX mark at the time the disputed domain names were registered.
Complainant submits that the registrant of <bitmexsignal.com> and <bitmexsignals.com> sought to exploit Complainant's success by registering <bitmexsignals.com> on March 28, 2018 and registering <bitmexsignal.com> on September 23, 2019 - over three and five years respectively after Complainant began acquiring rights in the BITMEX mark.
Complainant asserts that it had an established business with an Internet presence and registered trademark rights in the BITMAX mark, when the disputed domains were registered subsequent to the registration of Complainant's European Union trademark (filed on March 14, 2017, and registered August 11, 2017) and the filing of its subsequently registered People's Republic of China trademark (filed on March 15, 2017).
Complainant submits that Respondent is using the disputed domain name to confuse consumers as to the source and ownership of the disputed domain names and to deceivingly attract consumers to Respondent's websites in violation of Complainant's trademark rights.
Both of the disputed domain names direct to a website that offers services similar to those provided by Complainant. Beginning at least as early as December 10, 2019, the disputed domains resolved to a webpage offering cryptocurrency trading services for "Margin Trading like a PRO, without years of study and hours of Technical Analysis (TA)," similar to those offered by Complainant. Prior panel decisions have held that this type of activity is evidence of registration and use in bad faith. See Facebook Inc. v. Naija Host WIPO Case No. D2015-1057 ("The fact that Respondent is using the Domain Name to point to a website offering similar services to those offered by Complainant is further evidence that Respondent is deliberately seeking to cause confusion among Internet users.").
In an attempt to resolve this dispute amicably. Complainant sent a cease and desist letter to Respondent on December 18, 2019 and followed up on January 27, 2020 but did not receive a reply to either communications.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates a cryptocurrency-based virtual trading platform. Complainant is the owner of a portfolio of trademark registrations and has filed applications for the BITMEX trademark including the following:
European Union Trademark BITMEX, registration number 016462327, filed on March 13, 2017 and registered August 11, 2017 for services in class 36.
Peoples Republic of China Registered Trademark BITMEX, registration number 23148680, filed on March 15, 2017 and registered on October 28, 2018.
Complainant is also the owner of a number of Internet domain names incorporating the word “bitmex” including the domain name <bitmex.com> which was registered on August 27, 2003 and is the address of Complainant’s main website.
The disputed domain name <bitmexsignals.com> was registered on March 28, 2017 and <bitmexsignal.com> was registered on September 23, 2019. Each of the disputed domain names resolve to a webpage purporting to offer cryptocurrency trading services for "Margin Trading like a PRO, without years of study and hours of Technical Analysis (TA)"
There is no information available about Complainant except for that provided in the Complaint and the Registrar’s response to the Forum’s request for details of the registration of the disputed domain names in the course of this proceeding.
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”).
Complainant has provided convincing, uncontested evidence of its rights in the BITMEX mark established through its ownership of the abovementioned trademark registrations in the European Union and the People’s Republic of China; and established at common law by its extensive use of the mark on its Internet trading platform.
The disputed domain names are composed of BITMEX mark in its entirety in combination with the words "signal" and "signals", in each case with the gTLD <.com> extension.
Complainant’s trademark is the initial and dominant element of each of the disputed domain names. The additional words "signal" and "signals" do not distinguish the domain names from the BITMAX mark in any way. Furthermore, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that each of the disputed domain name is confusingly similar to the BITMEX mark in which Complainant has rights and Complainant has satisfied the requirements of Policy ¶ 4(a)(i) in respect of each.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names arguing that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not authorized or licensed any rights in Complainant's BITMEX marks to Respondent; that Respondent does not conduct any business, legitimate or otherwise, under the BITMEX marks or any similar marks; that Respondent is using the disputed domain names to divert traffic to Respondent’s website that purports to offer margin trading services in competition with Complainant.
It is well established that in such circumstances the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities 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).
The disputed domain name <bitmexsignals.com> was registered on March 28, 2017 and <bitmexsignal.com> was registered on September 23, 2019. Complainant’s European Union and Peoples Republic of China, registered trademarks were filed on BITMEX, March 13, 2017 and March 15, 2017, respectively. They were registered on August 11, 20l7 and October 28, 2018, respectively.
The disputed domain name <bitmexsignals.com> was therefore created prior to the registration of Complainant’s trademarks but subsequent to the date of filing.
The disputed domain name <bitmexsignal.com> was registered subsequent to the registration of Complainant’s European Union and People’s Republic of China trademarks.
It can be inferred from their use that the registrants of each of the disputed domain names were the same or a connected person as they both resolve to the same website and both now owned by Respondent.
Complainant has asserted in its Complaint and in its cease and desist letters that that it commenced business on November 24, 2014, which has not been challenged. Complainant’s principal domain name <bitmex.com> which is the address of its main website was created much earlier on August 27, 2003.
This Panel finds, on the balance of probabilities and on the uncontested evidence and submissions presented, that the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind in order to take advantage of Complainant’s established reputation for its margin trading platform.
The disputed domain names direct to a website that purports to offer margin trading services similar to those provided by Complainant. The record shows that on December 10, 2019, the disputed domains resolved to a webpage offering cryptocurrency trading services for "Margin Trading like a PRO, without years of study and hours of Technical Analysis (TA)," and Complainant has averred that this use continued as of the date of the Complaint.
As Respondent is therefore purporting to use the disputed domain names to offer services competing with Complainant, this Panel finds that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and the services it purports to offer on its website. Respondent is therefore using the disputed domain names in bad faith.
As this panel finds therefore that the disputed domain names have been registered and are being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexsignal.com> and <bitmexsignals.com> domain names be TRANSFERRED from Respondent to Complainant.
______________________
James Bridgeman SC
Panelist
Dated: March 14, 2020
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