HDR Global Trading Limited v. maurice leonard, book fandation
Claim Number: FA2207002005529
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is maurice leonard, book fandation (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexfinance.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 July 25, 2022; the Forum received payment on July 25, 2022.
On July 25, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitmexfinance.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 July 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@bitmexfinance.com. Also on July 26, 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 August 16, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has owned and operated a cryptocurrency trading platform using the BITMEX mark, since November 24, 2014 and has since grown to provide services to millions of consumers around the world in six languages, and currently averages several hundreds of millions to a billion dollars or more of trading volume per day.
Complainant claims rights in the BITMEX mark established by its use of the mark on its Internet platform at <www.bitmex.com> and through the international portfolio of service mark registrations for the mark, held by its subsidiary HDR SG PTE. LTD. which are described below.
Complainant alleges that the disputed domain name <bitmexfinance.com> is confusingly similar to Complainant’s BITMEX mark, as it incorporates the mark in its entirety. Complainant submits 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 the Policy. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163.
Noting that the disputed domain name includes the non-distinctive term “finance”, Complainant argues that 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 disputed domain and the complainant’s trademark. See AGFA-GEVAERT N.V. v. Ziyuanzhan, WIPO Case No. 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.”).
Furthermore, 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, citing WIPO Jurisprudential Overview 3.0 § 1.11.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not identified as “Bitmex” in the WhoIs information. Prior panels have held that a respondent did not have rights or legitimate interests when there was no evidence indicating that the respondent was known by the domain name at issue. See for example Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case No. 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.’”).
Complainant additionally asserts that Respondent is not licensed or authorized by Complainant to use the BITMEX marks and so Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Referring to a screen caputure of the website to which the disputed domain name resolved, Complainant submits that it shows that Respondent has used the disputed domain name to impersonate Complainant in order to attract business away from Complainant to a website offering services that compete with Complainant. See Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, WIPO Case No. D2018-0780 (“[T]he Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name in order to impersonate the Complainant for the purpose of attracting business to its competing website. Such use would not give rise to any rights or legitimate interests and, having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.”).
Complainant adds that prior panels have held that a respondent has no rights or legitimate interests in a domain name where, as here, the disputed domain name included complainant’s trademark and impersonates Complainant in an attempt to defraud unsuspecting consumers. See for example G4S Plc v. Mathia Klif, WIPO Case No. D2020-0158 (“[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.”)
Referring to a more recent screen capture, Complainant submits that the disputed domain name currently resolves to an inactive page. Prior panels have held that a respondent does not demonstrate use of a domain name in connection with a bona fide offering of goods or services when the domain name at issue includes a complainant’s trademark and resolves to an inactive page. See for example Renault SAS v. WhoisGuard, Inc. / Jota Tresele, WIPO Case No. D2020-2081(“The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Domain Name resolves to an inactive page. The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.”)
Complainant next argues that Respondent registered the disputed domain name in bad faith to capitalize on the goodwill associated with Complainant’s rights in the BITMEX mark by attempting to confuse consumers as to the source and/or ownership of the disputed domain name. Complainant asserts that it has spent years building its cryptocurrency trading platform and its rights in the BITMEX mark which is recognized internationally.
Complainant further argues that Respondent sought to exploit Complainant’s success by registering the disputed domain name years after Complainant acquired rights in the BITMEX mark and years after Complainant began building its cryptocurrency trading platform under the mark. See for example HDR Global Trading Limited v. A Si Di Fen Teng Ren, Claim No. FA2112001975598 (Forum Dec. 31, 2021) (“In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy.”).
Complainant asserts that the BITMEX marks are distinctive and because of the similarity of the disputed domain name to the BITMEX mark, the registrant must have been aware of Complainant and its mark and argues that a respondent’s actual knowledge of a complainant’s trademark when registering a domain name which incorporates that trademark is sufficient to support an inference of bad faith. 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.”)
In addition, referring again to the screen capture exhibited in an annex to the Complaint, Complainant contends that it shows that Respondent using the BITMEX mark while offering cryptocurrency mining and investment services. Prior panels have held that a domain name in issue was registered and used in bad faith when it resolved to a website offering goods or services competing with a complainant. See for example DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne, WIPO Case No. D2018-2565 (“It seems clear that the use of the Complainant’s mark in the Domain Name and the use of the Complainant’s box logo is an attempt to cause people to associate the web site at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his web site by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor. As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.”).
Furthermore, Complainant argues that the exhibited screen capture also shows that not only was Respondent previously offering competing services, but was attempting to pass off Complainant’s services as its own in an effort to defraud the public. See for example 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).); Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant argues therefore that Respondent’s bad faith is demonstrated by its 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 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 for example, 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 also adds that the evidence adduced shows that the disputed domain name currently resolves to an inactive page and argues that prior panels have held that a disputed domain was registered and being used in bad faith when the disputed domain resolved to an inactive website. See for example Instagram, LLC v. Mohammed Arshad, CelebLook, WIPO Case No. D2020-2224 (“The INSTAGRAM trademark is inherently distinctive and well known throughout the world. The Panel thus concludes that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith. . . . Following the receipt of the cease and desist letter, the disputed domain name stopped resolving to an active website. Nevertheless, considering the distinctiveness and reputation of the Complainant’s trademark and the failure of the Respondent to submit a response, the inactive use of the disputed domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Accordingly, the Panel concludes that the disputed domain name has been registered and used in bad faith.”).
Complainant adds that when the disputed domain name previously resolved to a webpage offering cryptocurrency mining and investment services, the web page displayed Complainant’s logo which is also a registered trademark. Complainant argues that prior panels have held that a respondent’s copying and display of a complaint’s trademark logo on a website supported a finding of bad faith registration and use. See Salesforce.com, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Angelo Bertoli, WIPO Case No. D2020-3160 (“The use of the Complainant’s Blue Cloud logo on the Respondent’s web site shows that the Respondent was targeting the Complainant and had actual knowledge of the Complainant, its rights, business and services. Internet customers were attracted intentionally to the Respondent’s web site by use of the Domain Name for commercial gain in an attempt to confuse and deceive as to the origin of the Respondent’s web site and services on it. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras 4(b)(iii) and (iv).”).
Finally, Complainant refers to copies of two cease and desist letters that it sent to Respondent to which Respondent did not reply, and noting that Respondent registered the disputed domain name through a privacy service, argues 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 No. 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.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates an online cryptocurrency trading platform on which it uses the BITMEX mark.
The evidence adduced shows that Complainant is the owner of People’s Republic of China Registered Trademark BITMEX (& Design), registration number 23148680, registered on October 28, 2018 for services in class 36.
Complainant’s subsidiary HDR SG PTE. LTD., of Singapore, owns the following portfolio of trademark registrations:
· United Kingdom registered Trade Mark BITMEX, registration number 00003218498, registered on June 2, 2017 for services in class 36;
· United Kingdom registered Trade Mark BITMEX (& Device) registration number 00003390977, registered on … for services in international classes 9 and 36;
· International trademark registration BITMEX (device), registration number 1514704, registered on October 10, 2019 for goods/ services in international classes 9 and 36
· European Union Trade Mark BITMEX registration number 016462327, registered on August 11, 2017 for services in class 36;
The disputed domain name was registered on January 20, 2022. As of as January 24, 2022, the disputed domain name resolved to a webpage purporting to offer cryptocurrency mining and investment services. Subsequently, as of July 14, 2022 resolved to an inactive webpage.
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 verification of the registration details of the registrant of the disputed domain name. The Registrar has confirmed that Respondent, who availed of a privacy service to conceal his identity, on the published WhoIs, is the registrant.
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 uncontested evidence to prove that it has rights in the BITMEX mark, established by the ownership, by itself and its subsidiary corporation, of the portfolio of registrations described above and extensive use of the mark in its online cryptocurrency trading platform.
The disputed domain name <bitmexfinance.com> consists of Complainant’s BITMEX mark in its entirety, in combination with the element “finance” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s BITMEX mark is the initial, dominant, and only distinctive element in the disputed domain name. The generic element “finance” has no distinguishing character and does not prevent a finding that the disputed domain name is confusingly similar to the BITMEX mark.
Additionally, the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s BITMEX mark.
This Panel finds therefore that the disputed domain name <bitmexfinance.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 identified as “Bitmex” in the WhoIs information for the disputed domain name;
· Respondent is not using the disputed domain name in connection with any rights or legitimate interests, as the disputed domain name incorporates Complainant’s BITMEX service mark;
· the screen capture of the website to which the disputed domain name resolved in the past shows that the disputed domain name has been used to impersonate Complainant in an attempt to defraud unsuspecting consumers;
· Respondent is not licensed or authorized by Complainant to use the BITMEX mark;
· Respondent is not making a legitimate noncommercial or fair use of the disputed domain name;
· the screen capture of the website to which the disputed domain name resolved in the past also shows that Respondent has used the disputed domain name to impersonate Complainant in order to attract business away from Complainant to a competing website;
· a more recent screen capture, shows that the disputed domain name currently resolves to an inactive page and prior panels have held that use of a domain name to resolve to an inactive web page does not constitute use in connection with a bona fide offering of goods or services.
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 Complainant has adduced uncontested evidence that it had used the BITMEX mark extensively on its cryptocurrency platform since 2014 and that in the intervening period Complainant’s business, reputation and has grown extensively across the Internet.
BITMEX is a distinctive mark that has no obvious meaning other than as Complainant’s service mark, and given the extent of the Complainant’s prior rights and reputation, it is implausible that the registrant chose and registered the disputed domain name that consists of Complainant’s mark as its initial, dominant and only distinctive element, in combination with the word “finance” which is by definition a reference to financial services, without knowledge of Complainant, its rights and its mark.
On the balance of probabilities this combination of elements must have been chosen and registered to target and take predatory advantage of Complainant’s mark and goodwill in the BITMEX mark.
This Panel finds therefore the disputed domain name was registered in bad faith.
In an annex to the Complaint, the Complainant has adduced in evidence screen captures of the websites to which the disputed domain name resolved in the past and currently resolved.
In the recent past, the disputed domain name resolved to a website that purported to offer crypto currency trading services, competing with Complainant’s business and displayed Complainant’s logo. Respondent’s intention of using the disputed domain name as the address of a website with such content, must have been to attract, confuse, divert and lure Internet traffic to Respondent’s website and upon arrival further confuse the Internet users by Respondent passing himself off as Complainant. Such use of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
This Panel is fortified in its finding that the disputed domain name is being used in bad faith by the more recent screen capture adduced in the annex to the Complaint, which shows that the disputed domain name subsequently resolved to an inactive website which, in itself, in these circumstances, is indicative of passive holding amounting to use in bad faith.
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 <bitmexfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman,
Panelist
Dated: August 18, 2022
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