HDR Global Trading Limited v. wa kuan
Claim Number: FA2210002014812
Complainant is HDR Global Trading Limited, Republic of Seychelles (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is wa kuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexy.com>, registered with Name.com, 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 October 5, 2022; Forum received payment on October 5, 2022.
On October 6, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <bitmexy.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 October 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@bitmexy.com. Also on October 10, 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 November 3, 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 trademark and service mark acquired by the ownership of the registrations listed below by itself and its wholly owned subsidiary and further argues that it has established a protectable goodwill in the mark by its use in its online cryptocurrency trading platform to which its own principal domain name <bitmex.com> resolves. Complainant adds that it has a large portfolio of other domain names that incorporate the BITMEX mark including <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
Complainant alleges that the disputed domain name is confusingly similar to the BITMEX mark in which Complainant has rights because the disputed domain name incorporates the BITMEX mark in its entirety and 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. Citing Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case D2000-0163.
Here, the disputed domain name is composed of the BITMEX mark with the letter “y” appended. Complainant submits that prior panels established under the Policy 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 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 adds that 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 interest in the disputed domain name arguing that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed any rights in the BITMEX mark to Respondent.
Complainant refers to a screen capture of the web page to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, as amended. The screen capture shows that the disputed domain name resolves to a webpage that includes a log-in prompt and Complainant submits that such use does not confer any rights or legitimate interests on Respondent. See Moroccanoil Israel Limited v. Newman, WIPO Case DNL2012-0051 (“Moreover, according to Complainant, the Domain Name is linked to a log-in webpage (requiring the completion of a username and password) merely mentioning the company or name ‘Horde’ without mention of the term ‘moroccanoil’. The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.”).
Complainant contends that Respondent is not using the disputed domain name in connection with any rights or legitimate interests, because Respondent is not licensed or authorized by Complainant to use the BITMEX mark. Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant further asserts that Respondent is not known by the disputed domain name.
Complainant finally alleges that the disputed domain name was registered and is being used in bad faith arguing that the disputed domain name was registered 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 has acquired rights in the BITMEX mark which is recognized internationally.
Complainant submits that the disputed domain name was registered years after Complainant acquired rights in the distinctive BITMEX mark and years after Complainant began building its cryptocurrency trading platform under those marks. 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 contends that it follows 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 BITMEX mark in the disputed domain name, to take advantage of Complainant’s goodwill.
Complainant continues that despite Respondent’s actual knowledge of Complainant and the BITMEX mark, Respondent proceeded to register the disputed domain name, and Complainant contends that a respondent’s actual knowledge of a complainant’s trademark when registering a domain name at issue 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.”).
The exhibited screen capture shows that the disputed domain name resolves to a page that collects users’ log-in credentials, which is evidence of bad faith use, as the disputed domain name may be used to collect customers’ log-in credentials with Complainant. See Swedbank AB v. Itai Mukonyora, WIPO Case DCO2019-0044 (“The Panel finds that the Respondent by using a domain name that is confusingly similar to the Complainant’s trademark rights in this way made it possible for the Respondent to obtain and collect login credentials of unsuspecting Internet users of the Complainant’s banking services, which is clearly bad faith use under the Policy. The Panel further finds that it is not possible to conceive of any plausible active good faith use to which the disputed domain name may be put. The disputed domain name carries a risk of implied affiliation.”).
In conclusion Complainant contends that under 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 (finding bad faith use).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates a cryptocurrency trading platform using the BITMEX trademark and service mark for which it owns the following registrations:
· European Union Registered Trademark BITMEX registration number 016462327, registered on August 11, 2017 for services in class 36;
· Republic of Korea Registered Trademark BITMEX, registration number 40-1463637, registered on March 29, 2019.
Complainant has also provided evidence of ownership by its wholly owned subsidiary, HDR SG PTE. LTD. of Singapore of the following registrations:
· International Trademark BITMEX & Design, registration number1514704, registered in classes 9 and 36;
· Hong Kong Registered Trademark BITMEX, registration number 304417902, registered on January 30, 2018, for services in class 36;
· China Registered Trademark BITMEX and Design, registration number 23148680 registered on October 28, 2018, registered in class 36.
Complaiant has an established Internet presence and its own domain name <bitmex.com> provides the address for its cryptocurrency trading platform.
The disputed domain name was registered on March 1, 2022, and resolves to an unbranded login web page that requests a username, password and the phrases “Open an account”, “Forgot Password” and “Online service”.
There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to request from the Forum for verification of the registration of the disputed domain name. The Registrar has confirmed that Respondent 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 convincing uncontested evidence that it holds rights in the BITMEX mark, established by the ownership by itself and its wholly owned subsidiary of the portfolio of trademark registrations described above, and its use of the mark in providing its cryptocurrency trading services.
The disputed domain name<bitmexy.com> consists of the BITMEX mark with the addition of the letter “y” and the generic Top Level Domain (“gTLD”) extension <.com>.
BITMEX is the initial, dominant and only distinctive element in the disputed domain name. The additional letter “y” has no immediate significance in context, either on its own or in combination with Complainant’s mark and its presence in the disputed domain name does not prevent a finding of confusing similarity.
In the circumstances of this proceeding, the gTLD extension <.com> would be considered a necessary technical requirement for a domain name registration and neither does its presence in the disputed domain name 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).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arhguing that
· Respondent is not known by the disputed domain name;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed any rights in BITMEX mark to Respondent;
· the screen capture of the webpage to which the disputed domain resolves, which is exhibited in an annex to the Complaint, shows that the disputed domain name resolves to a webpage that merely consists of an unbranded log-on page which does not confer any rights or legitimate interests to Respondent;
· Respondent is not using the disputed domain name in connection with any rights or legitimate interests, as 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;
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 trademark and service mark rights in BITMEX mark which long predate the registration of the disputed domain name on March 1, 2022.
The record shows that the BITMEX mark is both distinctive and recognized in the marketplace, as the name and address of Complainant’s cryptocurrency trading platform.
Given the distinctiveness, fame and strength of the Complainant’s BITMEX marks it is implausible that the disputed domain name, which is a combination of Complainant’s very distinctive mark and the letter “y”, was chosen and registered other than with Complainant’s mark in mind with the intention of creating an inference that there is some relationship between the disputed domain name and Complainant, its mark and its cryptocurrency trading platform.
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 Complainant, its business and goodwill in the BITMEX mark.
The screen capture adduced in evidence in the annex to the Complaint, shows that the disputed domain name resolves to an unbranded, simple, uncluttered web page which presents itself as a login page for a website. There is no reference to any business name. It is black lettering on a simple white background. There are no graphics. The wording is very sparse and merely presents fields for a visitor to insert a username and a password together with the phrases “Open an account”, “Forgot Password” and “Online service”. The phrases “Open an account”, “Forgot Password” and “Online service” give the impression that they link to another weblocation but there is no evidence of this adduced by Complainant.
Notwithstanding Complainant’s allegation that the webpage is being used for the purposes of phishing, the bare assertion has not been supported by any evidence and so this Panel must conclude that the disputed domain name is being passively held.
If Complainant wished to make a case that the disputed domain name is being used for the purposes of phishing, it would at least be expected that it could provide evidence of the locations to which the alleged links on Respondent’s web page lead.
Given the strength and distinctive character of the BITMEX mark, that the disputed domain name consists of combination of Complainant’s mark in its entirety with the meaningless letter “y” added on, that there is no plausible good-faith reason for registering the disputed domain name other than to infer a non-existing relationship with Complainant and its BITMEX brand, and that Respondent has failed to respond to this Complaint, 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 <bitmexy.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: November 3, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page