HDR Global Trading Limited v. Jacob Tan Zhang En, Perfso Technology
Claim Number: FA2208002007571
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Jacob Tan Zhang En, Perfso Technology (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex1.xyz> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2022; the Forum received payment on August 8, 2022.
On August 8, 2022, the Registrar confirmed by e-mail to the Forum that the <bitmex1.xyz> disputed 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 August 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@bitmex1.xyz. Also on August 11, 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 September 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 owns and operates a prominent cryptocurrency trading platform marketed to millions of consumers around the world in six languages. Complainant has been offering premier financial trading services in the field of digitized assets and cryptocurrencies since its inception in 2014. Today, Complainant’s business currently averages several hundreds of millions to a billion dollars or more of trading volume per day. Complainant is one of the largest cryptocurrency trading platforms in the world, servicing customers all over the world.
Through its wholly owned subsidiary, Complainant claims rights in the BITMEX trademark through its registration of the mark with multiple trademark agencies around the world, including, but not limited to, the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016462327, registered on August 11, 2017, in international class 36); and International Trademark Registration under the Madrid System (e.g., Reg. No. 1514704, registered on October 10, 2019, in international classes 9 and 36 (hereinafter collectively referred to as the “BITMEX Mark”).
Complainant owns the following domain names: <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>. The domain name <bitmex.com> resolves to Complainant’s official website at “www.bitmex.com”.
The disputed domain name was registered on December 15, 2021, more than seven years after Complainant first acquired rights in its BITMEX Mark. Since at least as early as March 4, 2022, the disputed domain name resolved to an inactive webpage. When Complainant filed the Complaint, the disputed domain name resolved to an inactive webpage displaying Chinese characters, which translated to “site not found”. As of the writing of this Decision, the disputed domain name resolves to a passive landing page that states: “This site can’t be reached. bitmex1.xyz’s server IP address could not be found.”
On March 10, 2022, and again on March 30, 2022, Complainant attempted to contact Respondent to resolve this dispute amicably by sending a cease-and-desist letter to Respondent. Complainant advised Respondent of Complainant’s rights in the BITMEX Mark, informed Respondent that it was infringing Complainant’s BITMEX Mark, and demanded transfer of the disputed domain name from Respondent to Complainant. Complainant did not receive a reply from Respondent.
Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s BITMEX Mark, as it incorporates the mark in its entirety, only adding the number “1” and the “.xyz” generic Top-Level Domain (“gTLD”). Complainant also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the BITMEX Mark based on its trademark registrations with several trademark agencies worldwide, including the EUIPO. Registration with multiple trademark offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BITMEX Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that the disputed domain name is confusingly similar to the BITMEX Mark as set forth below.
First, Complainant has rights in the BITMEX Mark through its registration of the mark with multiple trademark agencies around the world, including the EUIPO (e.g., Reg. No. 16462327, registered on August 11, 2017). Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Since Complainant provides evidence of its registration of the BITMEX mark with the EUIPO, the Panel finds that Complainant has sufficiently established rights in the mark per Policy ¶ 4(a)(i).
Second, the Panel concludes that Respondent’s <bitmex1.xyz> disputed domain name is identical or confusingly similar to Complainant’s BITMEX Mark, as it incorporates the mark in its entirety, only adding the number “1” and the “.xyz” gTLD. Simply adding a number and a gTLD is not sufficient to differentiate a disputed domain name from the mark it incorporates per Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the domain name from Complainant’s mark.”). The Panel therefore finds that such additions to the disputed domain name do not prevent the disputed domain name from being confusingly similar to the BITMEX Mark as long as the BITMEX Mark itself is recognizable.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel concludes that Respondent holds no rights or legitimate interests in the disputed domain name. In order for a complainant to succeed under this element, it must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show that it does have rights or legitimate interests. See 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”). If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its BITMEX Mark in the disputed domain name. In addition, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead currently inactively holds the disputed domain name. Under Policy ¶ 4(a)(iii), failure to make active use of a disputed domain name is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name where it failed to make an active use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name currently resolves to an inactive parking page with no substantive content. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Second, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Third, the fame of the BITMEX Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BITMEX Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its BITMEX Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Finally, Complainant states that Respondent acted in bad faith because Respondent failed to respond to Complainant’s two cease-and-desist letters. Failure to respond to a cease-and-desist letter may demonstrate bad faith pursuant to Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). In this case, Complainant provides two separate cease-and-desist letters sent to Respondent in March, 2022. Therefore, in sum, the Panel finds that Respondent acted in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <bitmex1.xyz> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 14, 2022
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