HDR Global Trading Limited v. Kim Kwanho
Claim Number: FA2009001915393
Complainant is HDR Global Trading Limited (“Complainant”), represented by David G. Barker of SNELL & WILMER L.L.P, Seychelles. Respondent is Kim Kwanho (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.link>, registered with Gabia, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Complaint was submitted in both Korean and English. The Forum received payment on September 30, 2020.
On October 5, 2020, Gabia, Inc. confirmed by e-mail to the Forum that the <bitmex.link> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 October 12, 2020, the Forum served the Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of November 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@bitmex.link. Also on October 12, 2020, the Korean language 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 November 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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.
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings should be conducted in English.
A. Complainant
i) Complainant offers various cryptocurrency and investment services. Complainant has rights in the BITMEX mark through its registrations with various trademark agencies throughout the world. (e.g. European Union Office of Harmonization in the Internal Market (“OHIM”) Reg. 16,462,327, registered on August 16, 2017; Korean Intellectual Property Office (“KIPO”) Reg. 40-1463637, registered on March 19, 2019). The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.link” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent violates its registration agreement with Complainant by attempting to divert Internet users to the disputed domain name’s resolving website, where Respondent offers competing services.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract internet users for commercial gain by advertising competing services on the disputed domain name’s resolving website. Respondent registered and uses the disputed domain name in violation of its affiliate agreement with Complainant. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The Panel notes that the disputed domain name was registered on December 15, 2019.
2. Complainant has established rights in the BITMEX mark through its registrations with various trademark agencies throughout the world. (e.g. OHIM Reg. 16,462,327, registered on August 16, 2017; KIPO Reg. 40-1463637, registered on March 19, 2019).
3. The disputed domain name’s resolving website advertises competing cryptocurrency investing services alongside Complainant’s rights and marks.
4. Respondent violates its registration agreement with Complainant by attempting to divert Internet users to the disputed domain name’s resolving website, where Respondent offers competing services.
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 rights in the BITMEX mark through its registrations with various trademark agencies throughout the world. (e.g. OHIM Reg. 16,462,327, registered August 16, 2017; KIPO Reg. 40-1463637, registered March 19, 2019). Registration with multiple trademark agencies is sufficient to satisfy rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s BITMEX mark, as it incorporates the mark in its entirety and adds the “.link” gTLD to the end of the mark. Adding a gTLD is generally an insufficient change in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). The disputed domain name incorporates Complainant’s mark in its entirety and adds the “.link” gTLD to the end of the mark. Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under 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), 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”).
Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. In lieu of a response, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “Kim Kwanho”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead violates its affiliate agreement with Complainant and attempts to divert Internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts competing and related services to Complainant’s business. Attempting to divert Internet users to a disputed domain name’s resolving website, where Respondent hosts competing or related services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ ¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain name’s resolving website, which allegedly features advertisements for Complainant’s services, as well as those of a competitor. Complainant argues this use violates its affiliate agreement with Respondent. As the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain name in bad faith by advertising competing services on the disputed domain name’s resolving website. Using a disputed domain name to resolve to a website that offers competing services is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which Complainant claims advertises competing cryptocurrency investing services alongside Complainant’s rights and marks. Therefore, the Panel finds Respondent registered and uses the disputed domain name for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s bad faith is further demonstrated by its registration and use the of the disputed domain name in violation of its affiliate agreement with Complainant. Registering a disputed domain name as an affiliate of a Complainant and in violation of the affiliate agreement may demonstrate bad faith under Policy ¶ 4(a)(iii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program). The Panel notes Complainant’s affiliate terms of service, which Complainant argues show that Respondent is violating the agreement through its registration and use of the domain name. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name in bad faith as it had actual knowledge of Complainant’s rights in the BITMEX mark at the time of registration. Actual knowledge is generally sufficient to demonstrate bad faith under Policy ¶ 4(a)(iii), and may be demonstrated by registration of a domain name that is identical or confusingly similar to a registered and/or distinct mark and use of the disputed domain name’s resolving website. See Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”); see also 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 provides numerous sources, including its official website and various third party articles about Complainant’s services that may demonstrate the distinctive character of Complainant’s BITMEX mark. The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and advertising of similar or competing services. The Panel also notes Complainant’s claim that Respondent was an affiliate of Complainant. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration under 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 <bitmex.link> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 9, 2020
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