HDR Global Trading Limited v. Promise Chinonso
Claim Number: FA2209002014072
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, US. Respondent is Promise Chinonso (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexfx.ltd>, 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 Forum electronically on September 29, 2022; Forum received payment on September 29, 2022.
On September 29, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <bitmexfx.ltd> 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 September 30, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@bitmexfx.ltd. Also on September 30, 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 October 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BITMEX mark established by the portfolio of registrations described below which are owned by its subsidiary corporation and through its widespread use of the mark in its cryptocurrency trading platform which has a volume of traffic which currently averages several hundreds of millions of dollars per day, making Complainant one of the largest cryptocurrency trading platforms, servicing customers all over the world.
Complainant alleges that the disputed domain name 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 at issue 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. Here, the registrant of the disputed domain name added the term “fx” to Complainant’s BITMEX mark, which Complainant submits is insufficient to avoid a finding of confusing similarity between the disputed domain name and Complainant’s BITMEX mark. 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.”).
Furthermore, Complainant argues that the addition of the generic Top-Level Domain (“gTLD”) suffix <.ltd> does nothing to distinguish the disputed domain name from the BITMEX mark so as to avoid a finding of confusing similarity between the disputed domain and 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’s use of a privacy service to conceal his or her identity suggests that Respondent is not commonly known by the disputed domain name. See Barrett Steel Limited v. Web Hosting, WIPO Case D2021-0055 (“As the Complainant contends, the Respondent does not seem to have used its actual name as a company to register the disputed domain name. This use of a ‘privacy service’ to conceal its identity makes any claim that the Respondent is commonly known as the disputed domain name seem all the more unlikely.”).
Complainant further asserts that Respondent is not sponsored or endorsed by Complainant, and that Complainant has never authorized or licensed Respondent to exercise any rights regarding Complainant’s BITMEX mark.
Complainant adds that prior panels 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. See G4S Plc v. Mathia Klif, WIPO Case 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.”).
Furthermore, Complainant refers to screen captures and copy correspondence which are exhibited in an annex to the Complaint, which show that the disputed domain has in the recent past resolved to a website purporting to offer cryptocurrency services causing Complainant’s legal representatives to then send two cease and desist letters to Respondent which were unanswered but the website was taken down and the disputed domain name now resolves to an inactive web page.
Complainant submits that therefore Respondent has no rights or legitimate interests in the disputed domain name because Respondent has been using the disputed domain name to impersonate Complainant in order to attract business away from Complainant and to a competing website. See Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, WIPO Case D2018-0780 (“Furthermore, the 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 Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because prior panels have held that a respondent does not demonstrate use of a disputed domain in connection with a bona fide offering of goods or services when, as in the present case, the disputed domain includes a complainant’s trademark and resolves to an inactive web page. See Renault SAS v. WhoisGuard, Inc. / Jota Tresele, WIPO Case 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 alleges that the disputed domain name was registered in bad faith to capitalize on the goodwill associated with Complainant’s 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 has thereby acquired rights in the BITMEX mark which is recognized internationally.
Complainant alleges that Respondent has 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 HDR Global Trading Limited v. A Si Di Fen Teng Ren, 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 adds that the registrant of the disputed domain name had actual knowledge of Complainant’s BITMEX mark, as is evident through Respondent’s use of the mark in the disputed domain name. Complainant adds that despite Respondent’s actual knowledge of Complainant and the BITMEX marks, Respondent proceeded to register the disputed domain name to take advantage of Complainant’s goodwill. Complainant 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 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.”).
Complainant further alleges that the disputed domain name is being used by Respondent in bad faith, as the exhibited screen captures which show that initially, Respondent was using the disputed domain name as the address of a website to impersonate Complainant, while purporting to offer competing services, while attempting to pass off its services as those of Complainant in an effort to defraud the public.
Complainant alleges 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 who are being duped into transferring valuable cryptocurrency to Respondent by misleading them to believe that they are dealing with Complainant.
Complainant submits that such use of the disputed domain name by Respondent to pass itself off as Complainant in furtherance of fraud is further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Complainant adds that the exhibited screen capture shows that disputed domain now resolves to an inactive webpage, and prior panels have held that a domain name at issue is registered and being used in bad faith when it resolves to an inactive website. See Instagram, LLC v. Mohammed Arshad, CelebLook, WIPO Case 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.”).
Furthermore, Complainant submits that Respondent has failed to respond to two cease and desist letters, copies of which are exhibited in an annex to the Complaint and argues that such lack of communication, 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.
In the circumstances of this case, “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[.]” Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case D2000-0003 (WIPO Feb. 18, 2000) (finding bad faith use).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of an online cryptocurrency-based trading platform and has rights in the BITMEX mark by use on its virtual trading platform and the portfolio of trademark registrations owned by its 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 January 18, 2022 and resolves to an inactive website.
There is no information available about Respondent except for that which has been 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 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 ownership of its portfolio of trademark registrations described above and its use of the mark in its cryptocurrency trading services.
The disputed domain name<bitmexfx.ltd> consists of the BITMEX mark, in combination with the letters “fx” and the respective generic Top Level Domain (“gTLD”) extension <.ltd>.
BITMEX is the initial, dominant and only distinctive element in each of the disputed domain name. The letters “fx” are a well-established acronym for “foreign exchange” and therefore descriptive of services which are closely related to the cryptocurrency trading in which Complainant is engaged.
In the circumstances of this proceeding, the gTLD extension<.ltd> would be considered a necessary technical requirement for a domain name registration and does not prevent a finding of confusing similarity.
This Panel finds therefore that each of the disputed domain name is confusingly similar to the BITMEX mark in which the Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
· Respondent’s use of a privacy service to conceal Respondent’s identity suggests that Respondent is not commonly known by the disputed domain name;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to exercise any rights in Complainant’s BITMEX mark;
· prior 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;
· screen captures of the website to which the disputed domain name has in the past resolved and currently resolves and the copy correspondence which are exhibited in an annex to the Complaint show that the disputed domain has, in the recent past, resolved to a webpage offering cryptocurrency services; and that Complainant’s legal representative sent two unanswered cease and desist letters to Respondent and the disputed domain name now resolves to an inactive web page;
· such impersonation of Complainant in order to attract business away from complainant and to a competing website, does not amount to the establishment of rights or legitimate interests in the disputed domain name or use in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use; and
· neither does use of the disputed domain name to resolve to an inactive web page demonstrate use of a disputed domain in connection with a bona fide offering of goods or services when the disputed domain includes a complainant’s trademark and resolves, as in the present case.
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).
Complainant has adduced clear and convincing, uncontested evidence that it has rights in BITMEX mark which long predate the registration of the disputed domain name.
The BITMEX mark is not only distinctive but has achieved a very high degree of recognition in the marketplace.
Given the distinctiveness, fame and strength of the Complainant’s BITMEX mark, it is implausible that the disputed domain name, which is a combination of Complainant’s very distinctive mark and the acronym “fx” which infers a relationship with foreign exchange services, could have been registered without knowledge of Complainant, its mark, services, goodwill and reputations.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainants’ mark and goodwill in the BITMEX mark.
The screen capture adduced in evidence in the annex to the Complaint show that the disputed domain name has been used as the address of a website which not only purports to impersonate Complainant by offering cryptocurrency services but also worryingly invite unsuspecting Internet users to follow invitations to invest through links on the website. This would seem to indicate that Respondent is engaged in a phishing scheme as alleged. The use of the disputed domain name to impersonate Complainant, would, on its own, be sufficient to ground a finding of use of the disputed domain name in bad faith by Respondent. The probability that Respondent is engaged in phishing activity only serves to make the bad faith activity more grievous.
Furthermore the disputed domain name is being passively held and at the time of filing the Complaint, resolved to an inactive page. Given the strength and distinctive character of the mark, that the disputed domain name consists of combination of Complainant’s mark in its entirety, with the “fx” element which references a business activity closely connected with that carried on by Respondent, that there is no plausible good-faith reason for Respondent to hold and use the confusingly similar disputed domain name, that Respondent has failed to respond to Complainant’s two cease and desist letters, or to this Complaint and that Respondent has availed of a privacy service to conceal his or her identity on the published WhoIs, this Panel finds that on the balance of probabilities the passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
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 paragraph 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 <bitmexfx.ltd> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________
James Bridgeman SC
Panelist
Dated: October 27, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page