HDR Global Trading Limited v. 888 888
Claim Number: FA2204001993725
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is 888 888 (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexreferralcode.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2022; the Forum received payment on April 25, 2022.
On April 26, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bitmexreferralcode.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 April 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2022 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@bitmexreferralcode.com. Also on April 27, 2022, 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 20, 2022, 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.
A. Complainant
i) Complainant operates in the cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark with various trademark agencies (e.g., World Intellectual Property Organization (“WIPO”) Reg. No. 1,514,704, registered October 10, 2019; European Union Intellectual Property Office (“EUIPO”) Reg. No. 16,462,327, registered August 11, 2017). The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the term “referral code” along with the “.com” 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 BITMEX mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent inactively holds the disputed domain name and attempted to confuse consumers into thinking Complainant’s website was inactive. Respondent previously used the domain name to host pay-per-click links. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX marks.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on August 27, 2021.
2. Complainant has established rights in the BITMEX mark with various trademark agencies (e.g., World Intellectual Property Organization (“WIPO”) Reg. No. 1,514,704, registered October 10, 2019; European Union Intellectual Property Office (“EUIPO”) Reg. No. 16,462,327, registered August 11, 2017).
3. Complainant’s BITMEX mark has become one of the most recognizable names in the cryptocurrency field as a result of its extensive use since 2014, with its website at attracting tens of millions of page views per month.
4. Respondent previously used the domain name to host pay-per-click links. The disputed domain name’s resolving website now features a blank white page.
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 with various trademark agencies (e.g., World Intellectual Property Organization (“WIPO”) Reg. No. 1,514,704, registered October 10, 2019; European Union Intellectual Property Office (“EUIPO”) Reg. No. 16,462,327, registered August 11, 2017). Registration with multiple trademark agencies around the world is generally sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). The Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <bitmexreferralcode.com> is identical or confusingly similar to Complainant’s BITMEX mark. Under Policy ¶ 4(a)(i), a domain is generally considered confusingly similar to the mark it incorporates where it adds a term relating to Complainant’s business along with a gTLD. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The disputed domain name incorporates the BITMEX mark in its entirety and adds the term “referral code” along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is 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. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS record identifies Respondent as “888 888”, 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 is not using 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) and (iii), inactively holding a disputed domain name is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features a blank white page. Therefore, the Panel finds Respondent is not using 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) and (iii).
Complainant argues that Respondent did not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use as the Respondent previously used the domain name to host a parked page with pay-per-click links. Under Policy ¶¶ 4(c)(i) and (iii), hosting pay-per-click links on a disputed domain name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(iii). Complainant provides a copy of a letter sent to Respondent along with a screenshot of the domain name’s pay-per-click links. Therefore, the Panel finds Respondent is not using 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) and (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 used the disputed domain name in bad faith by previously hosting pay-per-click links. Under Policy ¶ 4(b)(iv), hosting pay-per-click links is generally evidence of bad faith registration and use. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which previously hosted pay-per-click links. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the BITMEX mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). 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 registering the disputed domain name, which supports a finding of bad faith 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 <bitmexreferralcode.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 23, 2022
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