HDR Global Trading Limited v. main main / main
Claim Number: FA2211002019455
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is main main / main
(“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexprob2c.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on November 8, 2022; Forum received payment on November 8, 2022.
On November 8, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <bitmexprob2c.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 November 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@bitmexprob2c.com. Also on November 9, 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 December 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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
Through Complainant’s wholly owned subsidiary, HDR SG PTE. LTD., the Complainant has rights to the BITMEX trademark based upon registration with multiple international trademark agencies (e.g. BITMEX - Reg. No. 1,514,704, registered October 10, 2019). Respondent’s <bitmexprob2c.com> domain name is identical or confusingly similar to Complainant’s trademark as it adds “prob2c” to Complainant’s BITMEX trademark, as well as the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitmexprob2c.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as and compete with Complainant. Respondent used a WHOIS privacy service to register the disputed domain name.
Respondent registered and uses the <bitmexprob2c.com> domain name in bad faith. Respondent passes off as Complainant and disrupts Complainant’s business through the offer of competing services. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant, via Complainant’s wholly owned subsidiary, is the owner of a number of national and regional trademark registrations, such as:
- The International Trademark Registration No. 1514704 BitMEX (fig), registered October 10, 2019 for goods and services in Intl Classes 9 and 36, covering a number of countries such as Australia, BeNeLux, Switzerland, Germany, Denmark, Spain, Finland, France, Indonesia, India, France, Iceland, Italy, Japan, Republic of Korea, Norway, Philippines, Poland, Romania, Russian Federation, Sweden, Singapore, Slovenia, Turkey, Ukraine
- The EU Trade Mark Registration No. 016462327 BITMEX (word), registered August 11, 2014 for services in Intl Class 36
- The Hong Kong special region Trademark Registration No. 304417902 BITMEX (word), registered April 9, 2019 for services in Intl Class 36
- People's Republic of China National Trademark Registration No. 23148680 BitMEX (fig) for services in Intl Class 36
- Republic of Korea (ROK) National Trademark Registration No. 40-1463637 BITMEX (word), registered March 29, 2019 for services in Intl Class 36.
Respondent registered the <bitmexprob2c.com> domain name on August 30, 2022.
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 asserts rights in the BITMEX trademark based upon, via Complainant’s wholly owned subsidiaries, registration with multiple international trademark agencies including EUIPO (e.g., Reg.No. 016462327 BITMEX , registered August 11, 2014). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the BITMEX trademark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
Next, Complainant asserts Respondent’s <bitmexprob2c.com> domain name is identical or confusingly similar to Complainant’s trademark as it adds “prob2c” to Complainant’s BITMEX mark, as well as the “.com” gTLD. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purpose of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, the Panel notes that the “b2c” part of the disputed domain name is the common term for “business-to-consumer” selling services basically provided by online retailers, and therefore is closely related to the services provided by the Complainant. The Panel therefore finds that the <bitmexprob2c.com> domain name is confusingly similar to the BITMEX trademark under Policy ¶4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has no rights or legitimate interests in the <bitmexprob2c.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BITMEX trademark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel note that the WHOIS information of record identifies Respondent as “main main / main.”
Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s trademark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR trademark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <bitmexprob2c.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Complainant asserts, that Respondent’s disputed domain name resolved to alleged cryptocurrency trading and investment services in competition with Complainant prior to notice of the dispute. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <bitmexprob2c.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefitting via the offer of competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant for a registrant’s benefit can indeed evince a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Here, Complainant provides screenshot evidence of Respondent’s bad faith activity. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX trademark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the BITMEX trademark prior to registration of the disputed domain name based upon Respondent’s use of the BITMEX trademark in the Disputed Domain to take advantage of Complainant’s goodwill in the BITMEX trademark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s trademark, demonstrating 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 <bitmexprob2c.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 14, 2022
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