HDR Global Trading Limited v. Ni Cary
Claim Number: FA2111001972574
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Ni Cary (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex.site>, registered with West263 International Limited.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2021. The Forum received payment on November 9, 2021. The Complaint was initially submitted in English and an Amended Complaint in both English and Chinese was submitted following confirmation by the Registrar that its Registration Agreement is in Chinese.
On November 11, 2021, West263 International Limited confirmed by e-mail to the Forum that the <bitmex.site> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited registration agreement, which is in Chinese, 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 November 17, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 7, 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.site. Also on November 17, 2021, the Chinese and English 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 December 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the West263 International Limited registration agreement is in Chinese.
Pursuant to Rule 11(a), the language of the proceeding in relation to the <bitmex.site> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the BITMEX mark and the “.site” generic top-level domain (“gTLD”) are in the English language and that the domain name resolves to an English language website. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be sufficiently conversant in English that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Complaint and Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant operates a cryptocurrency exchange. Complainant has rights in the BITMEX mark through registrations with various trademark agencies throughout the world including the European Union Intellectual Property Office (“EUIPO”). Respondent’s <bitmex.site> domain name is identical or confusingly similar to Complainant’s BITMEX mark.
Respondent lacks rights and legitimate interests in the <bitmex.site> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers the domain name for sale while inactively holding its resolving website.
Respondent registered the <bitmex.site> domain name in bad faith with actual knowledge of Complainant’s rights in the BITMEX mark. Respondent offers the domain name for sale and inactively holds the domain name’s resolving website. Respondent failed to respond to Complainant’s cease-and-desist letter and used a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the BITMEX mark through numerous registrations, including with the EUIPO (e.g., Reg. No. 016,462,327, registered Aug. 11, 2017). The Panel finds Respondent’s <bitmex.site> domain name to be identical to Complainant’s BITMEX mark, only differing by the addition of the inconsequential “.site” gTLD, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <bitmex.site> domain name was registered on September 5, 2021, several years after Complainant has shown that its BITMEX mark had become distinctive and famous worldwide. It resolves to a website at which the domain name is offered for sale for $US200.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <bitmex.site> domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous BITMEX mark when Respondent registered the <bitmex.site> domain name. However, the Panel is not satisfied that, in offering the domain name for sale to anybody for US$200, Respondent’s primary purpose was as set out in paragraph 4(b)(i) of the Policy.
As to whether Respondent’s passive holding of the domain name is in bad faith, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 3.3 provides:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity… and (iv) the implausibility of any good faith use to which the domain name may be put.”
All the circumstances set out in the WIPO Overview are present in this case. The Panel notes in particular the distinctiveness and fame of Complainant’s mark; the fact that Respondent must have been aware of Complainant’s mark; the implausibility of any good faith use to which the domain name may be put; and Respondent’s failure to provide a response or to provide any evidence of actual or contemplated good-faith use. Accordingly, the Panel finds Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the <bitmex.site> domain name was registered and is being used in bad faith by Respondent.
Complainant has established this element.
DECISION
Complainant 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.site> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 15, 2021
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