HDR Global Trading Limited v. Wylie Aronow
Claim Number: FA2104001943672
Complainant is HDR Global Trading Limited (“Complainant”), represented by Anne M. Bolamperti of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Wylie Aronow (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.guru>, 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 April 30, 2021; the Forum received payment on April 30, 2021.
On May 3, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitmex.guru> 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 May 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 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.guru. Also on May 4, 2021, 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 25, 2021, 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 disputed domain name <bitmex.guru> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BITMEX mark established by its ownership of the trademark and service mark registrations set out below.
In addition, Complainant submits that it has established rights and goodwill in the mark through its use in its cryptocurrency-based virtual trading business that has grown since its inception in 2014, to average between $1 billion and $5 billion of trading volume per day, with an annual trading volume of $1 trillion, serving customers all over the world.
Complainant alleges that the disputed domain name is identical and confusingly similar to its BITMEX mark as it is composed of Complainant’s mark in its entirety, which it submits is sufficient to establish identity or confusing similarity purposes of the Policy.
Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) suffix <.guru> does not add sufficient distinctiveness so as to avoid a finding of similarity between the disputed domain name and Complainant’s BITMEX mark. Citing Axis AB v. Roger Ralston, Directview Holdings, Inc. WIPO Case No. D2018-2058 (“The disputed domain name <axis.guru> reproduces the Complainant’s trademark AXIS without alteration.…..Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (‘gTLD’) (e.g., ‘.com’, ‘.info’, ‘.guru’, ‘.org’) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.”)
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant has prior rights in the use of the BITMEX mark because its trademark registrations predate the registration of the disputed domain name.
Complainant asserts that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or granted any license to Respondent regarding Complainant’s BITMEX.
Complainant adds that there is no evidence to suggest that Respondent is commonly known by the disputed domain name and Respondent is using a proxy registration to shield the identity of the registrant, citing Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055 (“As the Complainant contends, the Respondent does not seem to have used its actual name as a company to register the disputed domain name. This use of a ‘privacy service’ to conceal its identity makes any claim that the Respondent is commonly known as the disputed domain name seem all the more unlikely. Therefore, the Panel concludes that Policy, paragraph 4(c)(ii) is inapplicable to this case….Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.”).
Referring to a screenshot of the website to which the disputed domain name resolves, which is annexed to the Complaint, Complainant asserts that the disputed domain name, which includes Complainant’s trademark in its entirety, is being used to redirect Internet users to Complainant’s website which is not a bona fide offering of goods or services by Respondent. Citing Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055 (“The Panel accepts the Complainant’s contention, supported by evidence attached to the Complaint (Annex 7), that the disputed domain name is used to redirect Internet users to the Complainant's website. The Panel finds that this is not a bona fide offering of goods or services as might have met the criterion for rights or legitimate interests in a disputed domain name per Policy paragraph 4(c)(i))”);
Complainant further alleges that the disputed domain name was registered in bad faith arguing that the disputed domain name was registered to knowingly and willfully capitalize on the goodwill associated with Complainant’s rights in the BITMEX mark.
As the disputed domain name was registered subsequent to Complainant’s applications to file the BITMEX mark in 2017, Complainant contends that the registrant of the disputed domain name must have had actual knowledge of Complainant’s distinctive BITMEX mark when the disputed domain name was registered.
Complainant further contends that the disputed domain name is being used in bad faith as it is being used to redirect Internet traffic to Complainant’s own website which both supports the argument that the disputed domain name was registered with actual knowledge of Complainant’s BITMEX mark.
Complainant adds that it sent two cease and desist letters to Respondent who did not respond to either. Complaint submits that Respondent’s lack of communication, in combination with Respondent’s use of a privacy service to hide the individual’s identity, is persuasive evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and maintains a cryptocurrency-based virtual trading platform on and for which it uses the BITMEX mark. In addition to pending applications for the mark in the United States, Complainant owns the following registrations:
· International trademark registration BITMEX (device), registration number 1514704, registered on October 10, 2019 for goods/ services in international class 9.
· European Union Trade Mark BITMEX registration number 016462327, registered on August 11, 2017 for services in class 36.
· Republic of Korea registered service mark number 40-1463637, registered on the Principal Register on March 29, 2019 for services in class 36.
Complainant has an established Internet presence with websites to which its numerous domain names that incorporate the BITMEX mark resolve including <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>,<bitmex.exchange>, and <bitmex.info>.
The disputed domain name was registered on March 2, 2018 and is being used to redirect Internet users to Complainant’s own webpage.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service to conceal his identity on the published WhoIs and the identity of the registrant was disclosed by the Registrar to the Forum 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 clear, convincing and uncontested evidence of its rights in the BITMEX mark, established by its ownership of the trademark and service mark registrations described above. In addition, Complainant has shown that it has established rights and goodwill in the mark through its use in its online in its cryptocurrency-based virtual trading services, which it claims has an annual trading volume of $1 trillion.
The disputed domain name is composed of Complainant’s BITMEX mark in its entirety with no other element except for the generic Top Level Domain (“gTLD”) <.guru> extension.
For the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.guru> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is identical to the BITMEX mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i)
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because
· Complainant has prior rights in the use of the BITMEX mark and its trademark registrations predate the registration of the disputed domain name;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to exercise any rights regarding Complainant’s BITMEX mark;
· there is no evidence to suggest that Respondent is commonly known by the disputed domain name and Respondent is using a proxy registration to shield the identity of the registrant;
· Respondent is using the disputed domain name, which includes Complainant’s trademark, to redirect Internet users to the Complainant’s website;
· Respondent is not using the disputed domain name for any bona fide offering of goods or services.
It is well established that, as in this case, once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding, and so this Panel must therefore 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 was registered on March 2, 2018, whereas Complainant’s European Union Trade Mark BITMEX registration number 016462327, was registered on August 11, 2017, pursuant to an application filed on March 14, 2013.
The evidence of Complainant’s actual use of the BITMEX mark and the extent of its reputation and goodwill on that date of registration of the disputed domain name is quite weak, However, given the date of establishment of Complainant’s prior rights, in particular Complainant’s European Union Trade Mark registration number 016462327, registered on August 11, 2017, the manner in which Respondent is causing, permitting or allowing the disputed domain name to resolve to Complainant’s own website, and in the absence of any response to Complainant’s cease and desist letter, this Panel finds on the balance of probabilities that the disputed domain name was registered in bad faith in order to knowingly take unfair advantage of Complainant’s goodwill which had been recently established at that time.
Complainant’s case is that it is the owner of a portfolio of domain name registrations <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>,<bitmex.exchange>, and <bitmex.info> which were in existence when the disputed domain name was registered. It is therefore improbable that the registrant of the disputed domain name would have been unaware of the significant number of pre-existing identical domain names on various gTLDs.
For the same reasons, and in particular because Respondent is allowing the disputed domain name to intercept Internet traffic and direct it to Complainant’s own website without permission, this Panel accepts that the disputed domain name is being used in bad faith.
Complainant’s argument that the use of a proxy service to conceal the identity of the registrant of the disputed domain name is evidence of bad faith registration is ironic because Complainant’s identity is redacted on the registrations of the very domain name registrations relied upon by Complainant to make its case viz. <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>.
This Panel finds that on the balance of probabilities Respondent is knowingly using Complainant’s trademark in the disputed domain name to attract and divert Internet traffic intended for Complainant and so the disputed domain name is being used in bad faith.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
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.guru> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 26, 2021
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