HDR Global Trading Limited v. Riley Thomas / 1994
Claim Number: FA2006001899808
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Riley Thomas / 1994 (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexclipperx.com>, registered with GoDaddy.com, 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 June 10, 2020; the Forum received payment on June 10, 2020.
On June 11, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitmexclipperx.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@bitmexclipperx.com. Also on June 12, 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 July 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On July 8, 2020 the Panel issued an order requesting additional submissions from Complainant in relation to Complainant’s claimed trademark rights on or before Monday July 13, 2020, requiring Complainant to serve said additional submissions on Respondent, allowing Respondent the opportunity to make submissions on any said information received from Complainant not later than four working days (excluding Saturday and Sunday) of the date of service of said additional information by the Complainant on the Respondent and extending time for rendering a decision.
On July 13, 2020 Complainant timely furnished the requested additional submissions. No further submissions were received from Respondent.
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 submits that it has rights in the BITMEX trademark and service mark acquired through its trademark and service mark registrations described below and its use of the mark on its cryptocurrency-based virtual trading platform. Complainant submits that it has marketed its services to millions of consumers around the world in five languages, offering financial trading services with a strong Internet presence, in the field of digitized assets such as bitcoins, cryptocurrency, digital tokens, virtual currency and digital currencies. Complainant submits that 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 submits that the disputed domain name is confusingly similar to Complainant’s BITMEX marks as it contains Complainant’s mark in its entirety. Complainant submits that it is well-established that where a domain name at issue 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 paragraph 4(a)(i) of 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 furthermore submits that the addition of the generic term “clipper” and the letter “x” do not add sufficient distinctiveness so as to avoid a finding of similarity between the disputed domain and its BITMEX marks.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not in any way sponsored by or affiliated with Complainant which is the owner of the BITMEX mark.
As of March 13, 2020, the disputed domain name resolved to a website which presents Complainant’s BITMEX mark on the upper banner, a copyright notice “Copyright © bitmexclipperx 2020” on the bottom of the webpage. while advertising a decentralized crypto trading platform called “Cryptro,” in an attempt to mislead consumers into believing that Respondent’s website is associated or affiliated with, or sponsored by, Complainant.
Complainant submits that it is not clear that Respondent’s website really offers any actual services.
The website purports to present “biographies” of the website’s “Executive Team” and “Project Advisors”. These biographies are in nearly identical language which is unrelated to the services that Respondent purports to provide on the website and includes a quotation from the author Johann Wolfgang von Goethe’s 1774 novel, The Sorrows of Young Werther. This unrelated quotation supports Complainant’s arguments that Respondent may not be offering any real goods or services, that the alleged executives shown on the “Executive Team” and “Project Advisors” may not exist as real people.
Complainant adds that such unauthorized competing use of the disputed domain does not confer any rights or legitimate interests on Respondent. See CareSource v. Domain Administrator, See PrivacyGuardian.org/FAG, WIPO Case No. D2018-2411 (“Panels have found that a respondent is not using a domain name for a bona fide offering of goods or services if it uses the name for competing services or to point to pay per click links diverting Internet users to a web site competing with the complainant under its mark.”).
Complainant submits that the disputed domain could arguably be used to engage in phishing or scamming activities by gathering the personal information of unsuspecting consumers.
Complainant submits that the registrant of the disputed domain name was aware and had actual knowledge of Complainant’s mark and reputation when the disputed domain name was registered.
Complainant asserts that its BITMEX mark is inextricably linked with Complainant which illustrates that by registering the disputed domain years after Complainant acquired protectable trademark rights in BITMEX and years after Complainant began building its cryptocurrency trading platform under the BITMEX mark, Respondent has sought to exploit Complainant’s reputation and success. Complainant submits that a respondent’s actual knowledge of a complainant’s trademark when registering a domain name which incorporates that trademark is sufficient to support an inference of bad faith. See Valio Oy v. Muhammad Tayab, Dairy Engineering Int’l, WIPO Case No. D2017-2376 (“Respondent is highly likely to have had actual knowledge of Complainant's famous VALIO mark, as evidenced by Respondent's use of the identical mark in the disputed domain name. The fact that Respondent registered a domain name which incorporates the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith.”).
Complainant adds that Respondent’s use of the disputed domain name in connection with a website that appears to mislead consumers about whether Respondent actually offers any services whatsoever is further evidence of Respondent’s bad faith registration. See Resmac, Inc. d/b/a Lendgenuity v. Whois Agent, Domain Protection Services, Inc. / Jon Clifford, WIPO Case No. D2017-1692 (Panel determining that respondent registered a disputed domain in bad faith when the respondent did not use the disputed domain to offer any actual services, and that “Respondent used the disputed domain name for a website that sought to pass itself off as a mortgage lending website operated by Complainant establishes that Respondent intentionally targeted Complainant and its LENDGENUITY mark and did so to misdirect and attract consumers to its website for Respondent’s profit or possibly a nefarious purpose.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
In response to the Order of the Panel on 8 July 2020, Complainant provided additional information relating to ownership of the trademark registrations relied upon to establish its rights in the BITMEX mark.
Respondent was given the opportunity to make submissions in relation to Complainant’s additional information but no submissions were received.
Complainant owns and operates a cryptocurrency-based virtual trading platform which it markets using the BITMEX trademark. Complainant owns a portfolio of registered trademarks and pending applications for the BITMEX mark including:
European Union Trade Mark, BITMEX, registration number 016462327, registered on August 11, 2017 for services in class 36;
People’s Republic of China registered service mark BITMEX, registration number 23148680, registered on October 28, 2018 for services in class 36.
Complainant has an established Internet presence through its numerous registered domains names including <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
The disputed domain name was registered on January 1, 2020.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name.
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 adduced uncontested evidence that it has rights in the BITMEX trademark and service mark acquired through its trademark and service mark registrations described above and its use of the mark on its cryptocurrency-based virtual trading platform.
The disputed domain name is composed of Complainant’s trademark in combination with the term “clipper” and the letter “x” and the generic Top Level Domain extension <.com>.
Complainant’s trademark is the initial and dominant element of the disputed domain name. The additional elements “clipper” and the letter “x” do not add sufficient distinctiveness so as to avoid a finding of similarity between the disputed domain and its BITMEX marks.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not in any way sponsored by or affiliated with Complainant which is the owner of the BITMEX mark; that as of March 13, 2020, the disputed domain name resolved to a website which presented Complainant’s BITMEX mark on the upper banner, a copyright notice “Copyright © bitmexclipperx 2020” on the bottom of the webpage and advertised a competing crypto currency trading platform in an attempt to mislead consumers into believing that Respondent’s website is associated or affiliated with, or sponsored by, Complainant; that the indications are that Respondent’s website is a sham, that it is doubtful whether Respondent is in fact offering any services, and that the “biographies” of the website’s “Executive Team” and “Project Advisors” are fictitious.
Additionally Complainant submits that if Respondent’s is actually offering competing services on the website to which the disputed domain name resolves, such use of a domain name that is confusingly similar to Complainant’s mark, taking advantage of Complainant’s goodwill and reputation does not confer any rights or legitimate interests in the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations 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).
As the dominant element of the disputed domain name consists of Complainant’s registered trademark in combination other non-distinctive elements and is being used as the address of a website that purports to offer services competing with Complainant, it is improbable that the registrant of the disputed domain name was unaware of Complainant, its BITMEX mark and its crypto currency trading platform when the disputed domain name was chosen and registered. This Panel finds on the balance of probabilities the disputed domain name was in fact chosen and registered in bad faith to target Complainant, its goodwill and reputation in the BITMEX mark so as to divert internet traffic to Respondent’s website.
There is a number of factors indicating that the website to which the disputed domain name resolves are a sham. The “biographies” of the team which are presented as management of Respondent’s platform are not credible and it is improbable that any entity actually offering a trading platform would have such questionable information about its key personnel.
Complainant goes further and submits that the disputed domain could arguably be used to engage in phishing or scamming activities by gathering the personal information of unsuspecting consumers, but there is no evidence of this.
The exact aims of Respondent in establishing the website are not clear but what is clear is that Respondent is using Complainant’s mark incorporated into the disputed domain name to divert Internet traffic intended for Complainant to Respondent’s website with a commercial purpose in mind.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <bitmexclipperx.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman SC
Panelist
Dated: July 18, 2020
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