HDR Global Trading Limited v. Ukrop / Eric A Pearson Pearson
Claim Number: FA2210002014825
Complainant is HDR Global Trading Limited (“Complainant”), USA, represented by Mary D. Hallerman of SNELL & WILMER L.L.P. Respondent is Ukrop / Eric A Pearson Pearson (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swapbitmex.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On October 5, 2022, NameSilo, LLC confirmed by e-mail to Forum that the <swapbitmex.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@swapbitmex.com. Also on October 6, 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 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant offers digitalized asset and cryptocurrency financial trading services. Complainant claims rights in the BITMEX mark through its registration with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016462327, registered August 11, 2017). Through its widespread use in commerce, Complainant has acquired extensive rights and goodwill in the BITMEX marks and the BITMEX domain. The disputed domain name is confusingly similar to Complainant’s BITMEX mark as it wholly incorporates the mark and merely adds the descriptive word “swap” and “.com” gTLD.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BITMEX mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. The disputed domain name now resolves to an inactive page. Respondent registered the disputed domain through a privacy service.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered and uses the disputed domain name in bad faith by attempting to confuse consumers as to the source and/or ownership of the disputed domain to capitalize on Complainant’s long-standing, well-known, and distinctive BITMEX mark. Initially, Respondent was offering competing services and was attempting to pass off Complainant’s services as its own in an effort to defraud the public. The disputed domain name now resolves to an inactive webpage. Respondent had actual knowledge of Complainant’s rights in the BITMEX mark before its registration of the disputed domain name. Complainant sent Respondent two cease and desist letters, and Respondent responded to neither.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on April 1, 2022.
2. Complainant has established rights in the BITMEX mark through its registration under its subsidiary’ name HDR SG PTE. LTD. with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016462327, registered August 11, 2017).
4. The disputed domain name remains inactive.
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 claims rights in the BITMEX mark through its registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016462327, registered August 11, 2017). Registration with the EUIPO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i).
The Panel notes that Complainant provides evidence of its registration in the name of “HDR SG PTE. LTD.” with the EUIPO while stating it is a subsidiary of Complainant. The Panel considers and accepts that a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company has rights in a trademark under the UDRP for purposes of standing to file a complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0,” Section 1.4.1). Therefore, the Panel finds Complainant has rights in the BITMEX mark under Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name <swapbitmex.com> is confusingly similar to the BITMEX mark because it incorporates the mark in its entirety and only adds the descriptive word “swap” and the “.com” gTLD. The use of a mark in its entirety with the mere addition of a descriptive term or a gTLD fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not been sponsored or endorsed by, or authorized or licensed to use its BITMEX mark; the disputed domain name was registered under a privacy service; and the disputed domain name remains inactive.
Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Ukrop / Eric A Pearson Pearson.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name remains inactive.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent attempted to confuse consumers as to the source and/or ownership of the disputed domain to capitalize on Complainant’s long-standing, well-known, and distinctive BITMEX mark. Initially, Respondent was offering competing services and was attempting to pass off Complainant’s services as its own by making use of the BITMEX mark.
The Panel observes that use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also 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 has provided the Panel with screenshots of the disputed domain names’ resolving webpages that show Complainant’s BITMEX mark on display and offers services associated with Complainant’s mark. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further contends that the registration of the disputed domain name, followed by a passive holding of the disputed domain name, constitutes ‘use in bad faith.’ The Panel notes the disputed domain name remains inactive. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant has acquired extensive rights and goodwill in the BITMEX marks and the BITMEX domain through its widespread use. Complainant submits various exhibits showing Complainant’s use of the BITMEX marks. As further evidence of Complainant’s extensive use and associated rights and goodwill in its BITMEX marks, Complainant’s operation, which was founded on November 24, 2014, has become one of the most recognizable names in the cryptocurrency field, with its website at <bitmex.com> attracting tens of millions of page views per month. As such, Complainant’s mark BITMEX is considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name notwithstanding its receipt of the cease-and-desist letters from Complainant.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant further contends that that Respondent had knowledge of Complainant’s rights in BITMEX mark at the time of registering the disputed domain name because of Complainant’s international presence and pervasiveness in the cryptocurrency financial services market. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the BITMEX mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <swapbitmex.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 6, 2022
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