HDR Global Trading Limited v. Client Care / Web Commerce Communications Limited
Claim Number: FA2211002021553
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex86.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 23, 2022; Forum received payment on November 23, 2022.
On November 28, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <bitmex86.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@bitmex86.com. Also on November 29, 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 20, 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
The Complainant, through its wholly-owned subsidiary HDR SG PTE. LTD., registered the BITMEX trademark with numerous trademark agencies around the world. Respondent’s <bitmex86.com> domain name is confusingly similar to Complainant’s trademark as it wholly incorporates the trademark and appends the numbers “86” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bitmex86.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 impersonates the Complainant.
Respondent registered and uses the <bitmex86.com> domain name in bad faith. Respondent impersonates Complainant to offer competing goods. Respondent had actual knowledge of Complainant’s rights in the BITMEX trademark prior to registration of the disputed domain name. Respondent used a WHOIS privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and regional trademark registrations and applications, such as:
- The International Trademark Registration No. 1514704 BitMEX (fig), registered October 10, 2019 for goods and services in Intl Classes 9 and 36
- The EU Trade Mark Registration No. 016462327 BITMEX (word), registered August 11, 2014 for services in Intl Class 36
- People's Republic of China National Trademark Registration No. 23148680 BitMEX (fig) for services in Intl Class 36
- United Kingdom National Trademark Registration No. UK00003218498 BITMEX (word), registered June 2, 2017 for services in Intl Class 36
- United Kingdom National Trademark Registration No. UK00003390977 BitMEX (fig), registered June 28, 2019 for goods and services in Intl Classes 9 and 36.
The disputed domain name <bitmex86.com> was registered on August 28, 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”).
The Complainant claims rights in the BITMEX trademark, through its wholly-owned subsidiary HDR SG PTE. LTD., with multiple trademark agencies around the world. Registration of a trademark with multiple agencies is sufficient to establish rights in a trademark under 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).”). Here, Complainant provides registration certificates from those numerous trademark agencies, including with the EUIPO (e.g., EUIPO Reg. No. 016462327, registered Aug. 11, 2017). The Panel thereby finds that Complainant has rights in its BITMEX trademark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bitmex86.com> domain name is confusingly similar to Complainant’s trademark as it wholly incorporates the trademark and appends the numbers “86” and the “.com” gTLD. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”). The Panel therefore finds that the <bitmex86.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 <bitmex86.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 notes that the WHOIS information of record identifies Respondent as “Client Care.” 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 mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <bitmex86.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <bitmex86.com> domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use as, instead, Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Passing off for commercial gain can indeed represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides screenshot evidence of the resolving website for the disputed domain name, which copies Complainant’s BITMEX trademark and the associated colors and purports to offer competing crypto currency services. The Panel therefore finds that Respondent has failed to use the <bitmex86.com> domain name in connection with 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).
The Complainant claims that Respondent registered and uses the <bitmex86.com> domain in bad faith as Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Use of a disputed domain name in connection with passing off behavior in order to commercially benefit can evince bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”). Here, as noted above, the Complainant provides screenshot evidence of the resolving website for the disputed domain name, which copies Complainant’s BITMEX trademark and the associated colors and purports to offer competing crypto currency services. The Panel therefore concludes that Respondent registered and uses the disputed domain in bad faith.
Complainant submits that Respondent registered and uses the <bitmex86.com> domain name in bad faith because Respondent holds the disputed domain name under false WHOIS information. Use of false WHOIS information, including the use of a privacy shield, suggests bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”); see also Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the BITMEX trademark prior to registration of the disputed domain name. 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.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use 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 the fame of the trademark and Respondent’s use of the trademark to register the disputed domain name and host a resolving website that appropriates Complainant’s trademark and colors. Based on the use of the disputed domain name, 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 <bitmex86.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 22, 2022
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