HDR Global Trading Limited v. Stanley Offor
Claim Number: FA2109001964451
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Stanley Offor (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexref.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2021; the Forum received payment on September 20, 2021.
On September 21, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmexref.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@bitmexref.com. Also on September 21, 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 October 15, 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BITMEX mark acquired through its ownership of the trademark and service mark registrations described below and extensive use of the mark in connection with its virtual currency trading platform, which since 2014 has grown to have an annual trading volume of USD$1 trillion.
Complainant submits that it has an established Internet presence and refers to screen captures of its main website at <www.bitmex.com> which is exhibited in an annex to the Complaint. Complainant adds that it owns and uses a number of other domain names incorporating the BITMEX mark.
Complainant alleges that the disputed domain name is confusingly similar to its BITMEX mark as it incorporates the mark in its entirety, and the additional term “ref” is a descriptive or non-distinctive element. Prior panels have held that the addition of a descriptive or non-distinctive element to a complainant’s trademark was insufficient to avoid a finding of confusing similarity between a domain name at issue and the complainant’s trademark. AGFAGEVAERT N.V. v. Ziyuanzhan, Case No. D2019-3198 (WIPO Feb. 16, 2021) (“The test for whether a domain name is identical or confusingly similar to the Complainant’s trademarks is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold … Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether geographical, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).
Complainant adds that the generic Top-Level Domain (“gTLD”) suffix <.com> does nothing to distinguish the disputed domain name from the BITMEX mark as it does not add sufficient distinctiveness so as to avoid a finding of confusing similarity between the disputed domain name and the BITMEX mark. See Axis AB v. Roger Ralston, Directview Holdings, Inc., Case No. D2018-2058 (WIPO Nov. 13, 2018) (“Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (‘gTLD’) . . . may be typically disregard for purposes of consideration of confusing similarity between a trademark and a domain name.”)
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name. In this regard, Complainant asks this Panel to note Respondent registered the disputed domain name through a privacy service. Prior panels have held that a respondent did not have rights or legitimate interests in a domain name at issue when there was no evidence that the respondent was known by the disputed domain. See Barrett Steel Limited v. Web Hosting, Case No. D2021-0055 (WIPO Mar. 15, 2021) (“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.”).
Complainant asserts that Respondent is neither sponsored nor endorsed by Complainant, and Complainant has never authorized or licensed to Respondent any rights regarding Complainant’s BITMEX mark.
Complainant refers to screen captures of the website to which the disputed domain name resolves which are annexed to the Complaint. The screen captures show that as of July 29, 2021, Respondent’s website displayed the BITMEX marks and blue and red logo at the top of the webpage and the content of the website purports to be a cryptocurrency exchange platform that copied the look and feel of Complainant’s own website. Complainant alleges that this shows that Respondent has sought to defraud the public by impersonating Complainant. Prior panels have held that a respondent has no rights or legitimate interests in a domain name where, as here, the domain name includes complainant’s trademark and impersonates the complainant in an attempt to derive illegitimate financial gain from unsuspecting consumers. See G4S Plc v. Mathia Klif, Case No. D2020-0158 (WIPO Mar. 20, 2020) (“[U]se of a domain name for illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent.”) Complainant argues that such use of the disputed domain name would not give rise to any rights or legitimate interests.
Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent had actual knowledge of Complainant’s marks when it chose to use the BITMEX mark in the disputed domain name. Complainant adds that Respondent sought to exploit Complainant’s success by registering the confusingly similar disputed domain name years after Complainant acquired protectable trademark rights in the BITMEX mark.
Complainant asserts that it has spent years building its cryptocurrency trading platform and developing the BITMEX which is recognized internationally and argues that by registering the disputed domain name in bad faith, Respondent sought to capitalize on the goodwill associated with Complainant’s rights in the BITMEX mark by attempting to deceive consumers as to the source and/or ownership of the disputed domain name.
Complainant again refers to the screen captures of the website to which the disputed domain name resolves and submits that the exhibit shows that Respondent’s website uses Complainant’s red and blue logo along with information related to cryptocurrency trading in order to create the false impression of an association between the disputed domain name and Complainant. See The Net-A-Porter Group Limited v. VistaPrint Technologies Ltd., Case No. D2015-0863 (WIPO June 30, 2015) (“[T]his Panel is conscious that given the distinctive character of the Complainant’s NET-A-PORTER mark it is most improbable that the Respondent was unaware of the Complainant’s business and its reputation among internet users when the disputed domain names were chosen and registered.”).
Complainant submits that the evidence shows that Respondent registered and is using the disputed domain name in connection with a fraudulent scheme wherein Respondent is impersonating Complainant to swindle unsuspecting consumers by fraudulently purporting to offer cryptocurrency services. As part of the scheme visitors to Respondent’s website, are confused into believing that they are dealing with Complainant when they were not and are being duped into giving up valuable cryptocurrency to Respondent. Complainant submits that such use of the disputed domain name by Respondent to pass itself off as Complainant in furtherance of fraud further shows Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See HDR Global Trading Limited v. Host Master / 1337 Services LLC, FA 1859298 (Forum Sept. 19, 2019) (finding bad faith registration and use where respondent used the domain as part of a phishing scheme).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates a leading and prominent cryptocurrency-based virtual trading platform using the BITMEX trademark and has produced satisfactory evidence that it is the registered owner of:
· European Union Trademark BITMEX, registration number 016462327, registered on August 11, 2017 for services in class 36; and
· Republic of Korea registered trademark BITMEX, registration number 40-1463637, registered on March 29, 2019 for services in class 36.
Furthermore, a wholly owned subsidiary of Complainant, HDR SG PTE. LTD is the registered owner of International trademark registration BITMEX and device, registration number 1514704, registered on October 10, 2019 for goods and services in classes 9 and 36.
Complainant has an established Internet presence and maintains a website to which its domain name <bitmex.com>, registered on August 27, 2003 resolves.
The disputed domain name was registered on April 29, 2021 and resolves to a website that provides a cryptocurrency exchange platform.
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 by the Forum for details of the registration 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 clear and convincing, uncontested evidence that it has rights in the BITMEX mark acquired through its ownership of the trademark and service mark registrations described above, and that it has acquired an international reputation and goodwill in the mark by extensive use in connection with its virtual currency trading platform since 2014.
The disputed domain name <bitmexref.com> consists of Complainant’s BITMEX mark in combination with the suffix “ref” and the gTLD extension <.com>.
Complainant’s mark is the initial, only distinctive, and dominant element of the disputed domain name. The word “ref” has no obvious English language meaning except possibly as an abbreviation of the word “reference”, and in any event has no distinguishing character in the context of the disputed domain name or this Complaint.
In the circumstances of this Complaint the gTLD <.com> extension would be understood by Internet users to be a necessary technical element for a domain name with no distinguishing character.
Complainant has therefore shown that the disputed domain name is confusingly similar 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 a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent has endeavored to conceal his identity through use of a privacy service;
· Respondent is neither sponsored by nor endorsed by Complainant;
· Complainant has never authorized or licensed to Respondent any rights regarding Complainant’s BITMEX mark;
· the screen captures of the website to which the disputed domain name resolves which are annexed to the Complaint, show that, as of July 29, 2021, Respondent’s displayed the BITMEX mark and Complainant’s blue and red logo at the top of the webpage without license or authority;
· The screen captures show that Respondent is using the disputed domain name and the website to which it resolves to defraud the public by impersonating Complainant by purporting to offer a cryptocurrency exchange platform that copied the look and feel of Complainant’s own website and such use of the disputed domain name would not give rise to any rights or legitimate interests.
It is well established that 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 to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that the Complainant has proven on the balance of probabilities that 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 incorporates Complainant’s distinctive BITMEX mark in its entirety. Complainant’s rights predated the registration of the disputed domain name. Furthermore, Complainant’s business has grown significantly since 2014 to have an annual trading volume of USD$1 trillion.
Additionally, Complainant has an established Internet presence and maintains a website at <www.bitmex.com>.
In these circumstances it is improbable that the registrant of the disputed domain name was unaware of Complainant, its name, mark, website and the services it provides and accidently registered the domain name in which the dominant element is Complainant’s mark.
On the balance of probabilities, the registrant of the disputed domain name was aware of Complainant, its name, mark, domain name <bitmex.com> and its website to which that domain name resolves when the disputed domain name was chosen.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant’s BITMEX mark in mind in order to take predatory advantage of Complainant’s goodwill and reputation.
In reaching this decision this Panel is aware that very soon after its registration, the disputed domain name has been used by Respondent as the address of a website purporting to offer cryptocurrency exchange services while impersonating Complainant.
The evidence shows that Respondent is using the disputed domain name to attract and divert Internet traffic away from Complainant to Respondent’s website. Upon arrival at Respondent’s website, the screen captures of the website to which the disputed domain name resolves show that Internet users are met with content which includes Complainant’s red and blue logo and information related to cryptocurrency trading.
The evidence shows that Respondent is using the disputed domain name and the website to which it resolves to attract, divert and mislead Internet users to Respondent’s on which Respondent is impersonating Complainant. There is no plausible explanation for such a considered deception except that Respondent is intending to defraud unsuspecting consumers.
This Panel finds therefore that Respondent is therefore using disputed domain name 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 the services that Respondent purports to offer on his website.
Finally, for completeness it should be added that the screen capture of the website adduced by Complainant and in the annexes to the two cease and desist letters sent by Complainant to Respondent, there is a document entitled “The International Business Companies Act 2016 Certificate of Incorporation”. It states that “BitMEXREF” was incorporated on March 30, 2016. The certificate purports to have been signed by the “Deputy Registrar of International Business Companies” and given under the deputy registrar’s hand an seal in “SA, USA”.
Even if this were a valid certificate, which on the face of it, it is not, there is no evidence that Respondent has any association with a corporation named “BitMEXREF”, and furthermore the purported establishment of this, apparently fictional entity, post-dates the acquisition of rights and goodwill in the BITMEX mark by Complainant.
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) and is entitled to be granted the remedy sought in the 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 <bitmexref.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 18, 2021
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