HDR Global Trading Limited v. Bokiri Martins
Claim Number: FA2205001997522
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Bokiri Martins (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexmining.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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 May 23, 2022; the Forum received payment on May 23, 2022.
On May 25, 2022, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <bitmexmining.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@bitmexmining.com. Also on May 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 23, 2022 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 through its use of the mark in providing services on its cryptocurrency-based virtual trading platform and ownership of the portfolio of registered service marks described below by its wholly owned subsidiary HDR SG PTE. LTD.
Complainant submits that it has been providing services in digitized assets such as bitcoins, cryptocurrency, digital tokens, virtual currency, and digital currencies since its inception in 2014. Today, offering services in five languages, Complainant’s business has grown to average between $1 billion and $5 billion of trading volume per day, with an annual trading volume of $1 trillion.
Complainant submits that the disputed domain name is confusingly similar to the BITMEX mark as it incorporates the mark in its entirety, and argues that it is well-settled that where a domain name incorporates a complainant’s mark, that domain name is identical or confusingly similar to the complainant’s mark under paragraph 4(a)(i) of the Policy. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case D2000-0163.
Complainant argues that the non-distinctive term “mining” in the disputed domain name is descriptive of the process of verifying transactions of cryptocurrency, which therefore calls to mind Complainant’s cryptocurrency trading services.
Prior panels established under the Policy have held that the addition of a descriptive or non-distinctive element to a complainant’s trademark is insufficient to avoid a finding of confusing similarity between a disputed domain and the complainant’s trademark. See AGFA-GEVAERT N.V. v. Ziyuanzhan, WIPO Case D2019-3198 (“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”).
Further, Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix <.com> does nothing to distinguish the disputed domain name from the BITMEX mark. See Axis AB v. Roger Ralston, Directview Holdings, Inc., WIPO Case D2018-2058 (“Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (‘gTLD’) . . . may be typically disregarded for purposes of consideration of confusing similarity between a trademark and a domain name.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not known by the disputed domain name, is not using the disputed domain name in connection with any rights or legitimate interests, or making a legitimate noncommercial or fair use of the disputed domain name.
Complainant asserts that Respondent is not licensed or authorized by Complainant to use the BITMEX mark and Respondent is not sponsored or endorsed by Complainant.
Referring to a screen capture, exhibited in an annex to the Complaint, which shows that the disputed domain name directs to a website that uses Complainants mark and logo while purporting to offer cryptocurrency services, Complainant submits that such use is not legitimate and demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name.
Furthermore, Complainant submits that where, as in the context of the present Complaint, a respondent avails of a privacy service to hold a domain name registration, previous panels established under the Policy have held that a respondent did not have rights or legitimate interests in a disputed domain name as there was no evidence indicating that the respondent was known by the disputed domain. See Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case D2020-2778 (“Respondent is not identified in the WhoIs database as ‘accenture.’ Previous UDRP panels have held that a respondent was not commonly known by a disputed domain name for example if the WhoIs information was not similar to the disputed domain name. There is not any evidence in the case file showing that Respondent may be commonly known as ‘accenture.’”).
Panels established under the Policy have held that a respondent has no rights or legitimate interests in a domain name where, as here, the domain name includes a complainant’s trademark and impersonates the complainant in an attempt to defraud unsuspecting consumers. See G4S Plc v. Mathia Klif, WIPO Case D2020-0158 (“Use 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 alleges that the disputed domain name was registered and is being used in bad faith submitting that it has spent years building the reputation of its cryptocurrency trading platform with its website at <bitmex.com> attracting tens of millions of page views per month.
Adding that the BITMEX mark is distinctive and recognized internationally, Complainant argues that by registering the confusingly similar disputed domain name, years after Complainant acquired rights, Respondent sought to exploit Complainant’s success, and the disputed domain name has been registered purely to attempt to take advantage of the Complainant’s goodwill by free-riding on the repute of its trademark See, HDR Global Trading Limited v. Ni Cary, FA2111001972574 (Forum Dec. 15, 2021) (“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 argues that the disputed domain name was registered by Respondent with actual knowledge of Complainant’s BITMEX mark as is evident through Respondent’s use of the BITMEX mark in the domain name.
Complainant complains that notwithstanding this actual knowledge of Complainant’s rights in the BITMEX mark, Respondent proceeded to register the disputed domain name which is sufficient to support an inference of bad faith. See Valio Oy v. Muhammad Tayab, Dairy Engineering Int’l, WIPO Case D2017-2376 (“Respondent is highly likely to have had actual knowledge of Complainant’s famous VALIO mark, as evidenced by Respondent’s use of the identical mark in the disputed domain name. The fact that Respondent registered a domain name which incorporates the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith.”); HDR Global Trading Limited v. Garreth Griggs, FA2004001890660 (Forum Apr. 28, 2020) (“Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered <xbitmex.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s use of the domain name to directly compete with Complainant as discussed above. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name in itself shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Referring to screen captures of the website to which the disputed domain name resolves, which have been exhibited in an annex to the Complaint, Complainant submits that beginning at least as early as February 15, 2022, the disputed domain name has resolved to a webpage using the BITMEX mark and Complainant’s red and blue BITMEX logo while offering cryptocurrency trading services. Complainant attempted to contact Respondent to resolve this dispute amicably. Specifically, on February 15, 2022, Complainant sent a cease and desist letter to Respondent. Complainant advised Respondent of Complainant’s rights in the BITMEX marks and described Respondent’s violation of Complainant’s rights through Respondent’s use of the disputed domain name. Complainant did not receive a reply from Respondent.
In another attempt to resolve this dispute, Complainant followed up with Respondent on March 7, 2022, noting that the disputed domain name continued to resolve to the same website that displays the BITMEX mark and logo at the top of the webpage and encourages users to invest their money with Respondent’s platform. Again, Complainant did not receive a reply from Respondent. As of the date of the filing of this Complaint, continued to resolve to the website offering cryptocurrency trading services.
Complainant alleges therefore that not only is Respondent offering competing services, but is attempting to pass off Complainant’s services as its own in an effort to defraud the public. See HDR Global Trading Limited v. Host Master / 1337 Services LLC, FA 1859000 (Forum Sept. 28, 2019) (finding that using a disputed domain name to pass off services as complainant’s is bad faith under Policy ¶ 4(b)(iv).).
Complainant adds that Respondent’s bad faith is demonstrated by his use of the disputed domain name as part of a scheme aimed at defrauding confused website visitors. Such visitors, believing that they are dealing with Complainant, are being duped into transferring valuable cryptocurrency to Respondent. Respondent’s use of the disputed domain name to pass himself 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. Javier Harrison, FA 1920532 (Forum Dec. 10, 2020) (use of a disputed domain name to pass oneself of as a complainant as part of a fraudulent scheme is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).).
Complainant adds that Respondent’s lack of communication, in combination with Respondent’s use of a privacy service to hide his identity, is persuasive evidence of bad faith registration and use. See Groupe IRCEM v. Perfect Privacy, LLC / Milen Radumilo, White & Case, WIPO Case D2018-2330 (“[T]he attempts by the Respondent to hide its identity behind a privacy shield and the absence of any response by the Respondent to the Complainant’s emails are all indicators of use in bad faith.”).
Complainant concludes that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides cryptocurrency-based financial services and has rights in the BITMEX mark by use on its virtual trading platform and the portfolio of trademark registrations owned by subsidiary HDR SG PTE. LTD., including
· International trademark BITMEX (figurative), registration number 1514704, registered on October 10, 2019 for services in class 26;
· European Union Trademark BITMEX, registration number 016462327, registered on August 11, 2017 for services in class 36.
Complainant has an established Internet presence and provides its services on the platform on its principal website to which its domain name <bitmex.com>, registered on August 27, 2003, resolves. Complainant also holds numerous generic top-level domain names that incorporate the BITMEX mark, such as <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
The disputed domain name was registered on February 5, 2022 and at the time of filing of this Complaint resolved to a website offering cryptocurrency trading services.
There is no information about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the enquiry by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
The Registrar has confirmed that Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs, is the registrant 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 provided convincing evidence that rights in the BITMEX mark, established by its extensive use in relation to its cryptocurrency trading platform and the ownership of the portfolio of trademark registrations described above, held by its subsidiary company.
The disputed domain name <bitmexmining.com> consists of Complainant’s mark in its entirety, in combination with the word “mining” and the gTLD extension <.com>.
The BITMEX mark is the initial, dominant and only distinctive element in the disputed domain name. The word “mining” is descriptive and when used in combination with the BITMEX mark imputes a cryptocurrency verification process.
The gTLD extension <.com> does not prevent a finding that the disputed domain name is confusingly similar to the BITMEX mark as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <bitmexmining.com> is confusingly similar to the BITMEX mark in which Complainant has rights and 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 legitimate interests in the disputed domain name arguing that
· Respondent is not known by the disputed domain name;
· Respondent is not using the disputed domain name in connection with any rights or legitimate interests, or making a legitimate noncommercial or fair use of the disputed domain name;
· Respondent is not licensed or authorized by Complainant to use the BITMEX mark;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to use Complainant’s BITMEx;
· where, as in the context of the present Complaint a respondent avails of a privacy service to hold a domain name registration, previous panels established under the Policy have held that a respondent did not have rights or legitimate interests in a disputed domain name as there was no evidence indicating that the respondent was known by the disputed domain name;
· the screen capture, exhibited in an annex to the Complaint, which shows that at the time of filing this Complaint, the disputed domain name directs to a website that uses Complainant’s BITMEX mark and logo purporting to offer cryptocurrency services, passing himself off as Complainant, demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name;
· previous panels established under the Policy have held that a respondent has no rights or legitimate interests in a domain name where, as here, the domain name at issue includes a complainant’s trademark and impersonates the complainant in an attempt to defraud unsuspecting consumers.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find 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 uncontested evidence shows that Complainant has established a significant international, Internet-based, business and reputation in the field of cryptocurrency trading using the BITMEX mark.
Given the distinctive character of the BITMEX mark and its extensive use by Complainant in providing cryptocurrency services on its Internet platform, it is implausible that the registrant of the disputed domain name was not actually aware of Complainant, its cryptocurrency trading platform and its rights in the BITMEX mark, when the disputed domain name was chosen and registered.
The combination of the word “mining” with Complainant’s service mark in the disputed domain name further indicates that the registrant had actual knowledge of Complainant, its name, mark and platform when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities, the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant’s reputation and goodwill in the BITMEX mark.
The uncontested evidence is that Respondent is using the disputed domain name which is confusingly similar to Complainant’s mark, as the address of a website on which Respondent is passing himself off as Complainant by using Complainant’s mark and logo and purporting to offer cryptocurrency trading services.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith by intentionally using it in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on the website to which the disputed domain name resolves.
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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexmining.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 24, 2022
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