HDR Global Trading Limited v. bits trade
Claim Number: FA2208002010363
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, US. Respondent is bits trade (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmextradefx.com>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 30, 2022; Forum received payment on August 30, 2022.
On Aug 31, 2022, Hostinger, UAB confirmed by e-mail to Forum that the <bitmextradefx.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the names. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 September 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@bitmextradefx.com. Also on September 1, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant, HDR Global Trading Limited, operates a cryptocurrency platform.
Complainant claims rights to the BITMEX mark through its registration with multiple trademark agencies, including the United Kingdom Intellectual Property Office (“UKIPO”).
Respondent’s <bitmextradefx.com> domain name is identical or confusingly similar to Complainant’s BITMEX mark as it incorporates the mark in its entirety, adds the generic or descriptive terms “trade” and “fx”, and adds the generic top-level domain (“gTLD”) to form the disputed domain name.
Respondent lacks rights and legitimate interests in the <bitmextradefx.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed to Respondent any rights in the BITMEX mark. Respondent is not using the domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Rather, Respondent previously used the at-issue domain name to impersonate Complainant in an attempt to attract users to Respondent’s own competing webpage. Currently, the domain name resolves to an inactive webpage.
Respondent registered and uses the <bitmextradefx.com> domain name in bad faith. Respondent uses the confusingly similar nature of the at-issue domain in order to attract users to Respondent’s own webpage. Further, Respondent previously used the at-issue domain name in an attempt to impersonate Complainant and purport to offer competing services, likely in an attempt to defraud users. Currently, Respondent’s bad faith may be demonstrated through its inactive holding of the at-issue domain name. Furthermore, Respondent failed to respond to Complainant’s two cease-and-desist letters. Finally, Respondent registered the domain name with actual knowledge of Complainant’s well-known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the BITMEX mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the BITMEX trademark.
Respondent’s previously held the at-issue domain name to purport to offer services that compete with Complainant and now holds the domain name passively.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s UKIPO trademark registration for BITMEX, as well as other national registrations worldwide, is conclusive evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Kames Capital PLC v. Tom Harrison / Kames Capital Plc Limited, FA 1671583 (Forum May 20, 2016) (“Registration with UKIPO establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i).”); see also, Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”); see also, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <bitmextradefx.com> domain name contains Complainant’s BITMEX trademark followed with the terms or term “trade” and “fx” (a common abbreviation for “financial exchange”) with all followed by the “.com” top-level domain name. The differences between Complainant’s trademark and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <bitmextradefx.com> domain name is confusingly similar to Complainant’s BITMEX trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of <bitmextradefx.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name shows that the domain name’s registrant is materially different from the at-issue domain name and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <bitmextradefx.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent currently holds the at-issue domain name passively as browsing to the domain name finds no active webpage. Respondent’s passive holding of the <bitmextradefx.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). 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 under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Next, Respondent previously used the at-issue domain name to address a website that pretended to be affiliated with Complainant by mimicking Complainant’s genuine website. There, Respondent purported to offer services competing with Complainant’s offering. Like Respondent’s passive holding of the domain name such use of <bitmextradefx.com> indicates neither a bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also, Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <bitmextradefx.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above regarding rights and legitimate interests, Respondent holds the <bitmextradefx.com> domain name passively. On browsing to the <bitmextradefx.com> domain name, the browser fails to return an active webpage. Notably, Respondent’s passive holding of <bitmextradefx.com> indicates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent previously used the at-issue domain name. Respondent at one time used the domain name to pass itself off as Complainant and trick internet users into believing that the domain name and its referenced website were sponsored by Complainant. There, Respondent purported to promote and offer competing services. Respondent’s use of the confusingly similar domain name to attract internet users and capitalize on their confusion by offering competing services demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also, Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also, Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).
Moreover, Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered <bitmextradefx.com> as a domain name. Respondent’s actual knowledge of Complainant’s trademark prior to registering the at-issue domain name is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of terms suggesting Complainant’s BITMEX business in <bitmextradefx.com>. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name in itself shows Respondent’s bad faith registration and use of <bitmextradefx.com> pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmextradefx.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 28, 2022
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