HDR Global Trading Limited v. Sergey Pereverzev
Claim Number: FA2003001890555
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Sergey Pereverzev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexsignalz.com>, registered with DomainContext, 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.
Steven M. Levy, Esq. as Panelist.
The Complaint was submitted in both Russian and English.
Complainant submitted a Complaint to the Forum electronically on March 31, 2020; the Forum received payment on March 31, 2020.
On April 1, 2020, DomainContext, Inc. confirmed by e-mail to the Forum that the <bitmexsignalz.com> domain name is registered with DomainContext, Inc. and that Respondent is the current registrant of the name. DomainContext, Inc. has verified that Respondent is bound by the DomainContext, 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 April 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@bitmexsignalz.com. Also on April 6, 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 May 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Preliminary Matter – Language Of The Proceedings
A. Complainant
Complainant owns and operates a leading and prominent cryptocurrency-based virtual trading platform marketed to millions of consumers around the world in five languages. Complainant has rights in the trademark BITMEX mark through its use in commerce since 2014 and its registration with multiple trademark agencies around the world dating back to 2017, including the Russian Rospatent trademark office, the United States Patent and Trademark Office (“USPTO”), and the European Trademark Office (“EUTM”). Respondent’s <bitmexsignalz.com> domain name is confusingly similar to Complainant’s BITMEX mark. Respondent incorporates the mark in its entirety and adds the generic term “signalz”.
Respondent lacks rights or legitimate interests in the <bitmexsignalz.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the BITMEX mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates consumer confusion to offer services nearly identical to those offered by Complainant. However, after having received Complainant’s cease and desist letters, Respondent’s disputed domain name now resolves only to an inactive webpage.
Respondent registered and used the <bitmexsignalz.com> domain name in bad faith as Respondent’s domain name resolves to a page offering competitive services in the field of cryptocurrencies and, more recently, to an inactive webpage. Respondent also had actual knowledge of Complainant’s rights in the BITMEX mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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”).
Complainant claims to have rights in the BITMEX mark through its registration with various trademark offices including the Rospatent office in Russia, the EUIPO, and the USPTO. Registration of a mark with such trademark authorities is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”) Here, Complainant has provided the Panel with information pertaining to some of its trademark registrations[i]. Therefore, the Panel finds that Complainant has adequately shown rights in the BITMEX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bitmexsignalz.com> domain name is confusingly similar to Complainant’s BITMEX mark. Registration of a domain name that incorporates a mark in its entirety and adds a generic term does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Here, Respondent incorporates the mark in its entirety and adds the generic term “signalz” plus the “.com” TLD in registering its domain name. Therefore, the Panel finds that Respondent’s domain name confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <bitmexsignalz.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BITMEX mark or register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Sergey Pereverzev” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the BITMEX mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent creates consumer confusion to offer services that are competitive with Complainant’s own services. Use of a disputed domain name to offer competing and related services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Here, Complainant has provided the Panel with a screenshot of Respondent’s website at the disputed domain name showing offers to buy Bitcoin and other cryptocurrencies, services that compete with Complainant in this industry. Respondent has not filed a response or made any other submission in this case to refute Complainant’s assertions. Therefore, upon a preponderance of the evidence before it, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent’s <bitmexsignalz.com> domain name currently resolves to an inactive webpage. Use of a disputed domain name to resolve to an inactive webpage may be evidence that a respondent lacks rights or legitimate use in the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided a screenshot of the disputed domain name’s webpage as it resolved after Complainant sent cease and desist letters to Respondent. This page shows the error message “page not found.” From this, the Panel finds further evidence that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the BITMEX mark at the time of registering the <bitmexsignalz.com> domain name. The Panel notes that a respondent’s actual knowledge of a complainant's rights in the mark prior to registering a disputed domain name can adequately create a foundation upon which to find 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”). To support this assertion, Complainant points to the fact that Respondent capitalizes on Complainant’s BITMEX mark to promote its website. As such, the Panel finds compelling evidence to hold that Respondent did have actual knowledge of Complainant’s right in its mark at the time it registered the disputed domain name.
Complainant argues that Respondent registered and used the <bitmexsignalz.com> domain name in bad faith as Respondent’s domain name first sought to take advantage of Complainant’s mark and later resolved to an inactive webpage. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) Furthermore, failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (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).”) Here, Complainant has provided screenshots of the disputed domain name’s originally resolving webpage that shows promotion of cryptocurrency services that compete with Complainant’s own services. Later, after Complainant sent cease and desist letters to Respondent, the website displays the error message “page not found.” Respondent has not participated in this case to explain its actions and thus Complainant’s assertions go unrebutted. Therefore, based upon a preponderance of the evidence before it, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per 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 <bitmexsignalz.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 4, 2020
[i] The Panel notes that Complainant’s Annexes 1 and 2, pertaining to its claimed Rospatent and EUIPO trademark registrations, do not identify the owner of such registrations. Taking its own initiative to review public sources of information, the Panel conducted trademark searches at both the Rospatent and EUIPO websites. While it was able to confirm Complainant’s ownership of the EUIPO registration, no information was found regarding the claimed Rospatent registration. As such, Complainant’s Annex 1 will not be considered by the Panel.
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