HDR Global Trading Limited v. Client Care / Web Commerce Communications Limited
Claim Number: FA2301002029686
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, US. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmex60.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 30, 2023; Forum received payment on January 30, 2023.
On February 1, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <bitmex60.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. 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 February 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2023 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@bitmex60.com. Also on February 1, 2023, 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 February 22, 2023 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 established by its wholly owned subsidiary’s ownership of the trademark and service mark registrations described below and its extensive use of the mark in its cryptocurrency business.
Complainant submits that since it was founded on November 24, 2014, it has grown to become one of the most recognizable names in the field, its cryptocurrency trading platform at <www.bitmex.com> attracting tens of millions of page views per month.
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 in its entirety it follows that the domain name is identical or confusingly similar to the complainant’s mark under Policy ¶ 4(a)(i).
Furthermore, Complainant contends the disputed domain name is almost identical to Complainant’s mark as it consists of the BITMEX mark with the mere addition of the number “60”, which Complainant submits does nothing to distinguish the disputed domain name from the mark. Citing HDR Global Trading Limited v. John Wilson, FA2109001962334 (Forum Oct. 4, 2021) (“Registration of a domain name that contains a mark in its entirety and adds a number along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i).”)); WIPO Jurisprudential Overview 3.0 § 1.7.
Complainant adds that the addition of the generic Top-Level Domain (“gTLD”) suffix <.com> does not distinguish the disputed domain name from the BITMEX mark, citing the WIPO Jurisprudential Overview 3.0 § 1.11.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not identified as “Bitmex” in the WHOIS information and argues that prior panels established under the Policy have held that a respondent does not have rights or legitimate interests when there was no evidence indicating that the respondent was known by the domain name at issue. Citing Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case D2020-2778 (“Respondent is not identified in the WhoIs database as ‘accenture.’ Previous UDRP panels have held that a respondent was not commonly known by a disputed domain name for example if the WhoIs information was not similar to the disputed domain name. There is not any evidence in the case file showing that Respondent may be commonly known as ‘accenture.’”).
Complainant adds that Respondent is not using the disputed domain name in connection with any rights or legitimate interests, asserting that Respondent is not sponsored or endorsed by Complainant, and Complainant has never authorized or licensed Respondent to use Complainant’s BITMEX mark.
Additionally, Complainant asserts that Respondent is not licensed or authorized by Complainant to use the BITMEX mark, that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and Respondent is not known by the disputed domain name.
Referring to screen capture of the website to which the disputed domain name resolves Complainant submits that it shows that, beginning at least as early as December 5, 2022, Respondent has been using and continues to use the BITMEX mark in the disputed domain name and on the website to which it resolves to make a purported offering of cryptocurrency trading services, and that Respondent is also using Complainant’s red and blue logo and website images.
Complainant contends that such use is not legitimate.
Complainant adds that it has attempted to contact Respondent to resolve this dispute amicably. Specifically, on January 6, 2023, Complainant sent a cease and desist letter to Respondent, a copy of which has been exhibited in an annex to the Complaint, in which Complainant advised Respondent of Complainant’s rights in the BITMEX mark and described Respondent’s violation of Complainant’s rights through its use of the disputed domain name.
Complainant complains that as of the date of filing of this Complaint it has not received any reply from Respondent, and the disputed domain name continues to resolve to the same infringing webpage.
Complainant submits that 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 at includes complainant’s trademark and is being used by Respondent to impersonate Complainant in an attempt to defraud unsuspecting consumers. Citing 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 contends that a respondent has no rights or legitimate interests in a domain name at issue where, as here, Respondent has impersonated Complainant in order to attract business away from Complainant to a competing website. Citing, Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, WIPO Case D2018-0780 (WIPO May 17, 2018) (“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 next alleges that the disputed domain name was registered and is being used in bad faith, arguing that BITMEX is a particularly distinctive mark and the registrant of the disputed domain name had actual knowledge of Complainant’s marks, which is evident through Respondent’s use of the BITMEX mark in the disputed domain name and on the website to which is resolves as well as use of Complainant’s red and blue logo and website images on the resolving webpage.
Complainant argues that despite Respondent’s actual knowledge of Complainant and its marks, Respondent proceeded to register the disputed domain name.
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. Citing 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.”).
Further referring to the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant further contends that Respondent’s use of Complainant’s marks constitutes the impersonation of Complainant. Prior panels established under the Policy have held that a respondent’s copying and display of a complainant’s trademark logo on a website supports a finding of bad faith registration and use. Citing Salesforce.com, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Angelo Bertoli, WIPO Case D2020-3160 (“The use of the Complainant’s Blue Cloud logo on the Respondent’s web site shows that the Respondent was targeting the Complainant and had actual knowledge of the Complainant, its rights, business and services. Internet customers were attracted intentionally to the Respondent’s web site by use of the Domain Name for commercial gain in an attempt to confuse and deceive as to the origin of the Respondent’s web site and services on it. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras 4(b)(iii) and (iv).”).
In addition, referring to the unanswered exhibited cease-and-desist letter, and that the disputed domain name was registered through a privacy service, Complainant contends that Respondent’s lack of communication, in combination with the concealment of its identity, is persuasive evidence of bad faith registration and use. Citing Accenture Global Services Limited v. Milano Mariah, WIPO Case D2019-1067 (finding bad faith when the respondent concealed its identity by providing redacted WHOIS information).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates a cryptocurrency trading platform and its wholly owned subsidiary HDR SG PTE. LTD. own a portfolio of registrations for the BITMEX mark including the following for which Complainant has provided English language registration details:
· International Trademark Registration BITMEX (and Device), registration number 1514704, registered on October 10, 2019, for goods and services in classes 9 and 36;
· European Union Trade Mark BITMEX, registration number 016462327 , registered on August 11, 2017 for services in class 36;
· United Kingdom registered service mark BITMEX, registration number 00003218498 registered on June 2, 2017, for services in classes 36;
· United Kingdom registered trademark and service mark BITMEX (and device), registration number 00003390977, registered on June 28, 2019, for goods and services in classes 9 and 36.
Complainant’s subsidiary’s said portfolio also includes United Kingdom registered trademark blue and red Device, registration number 00003390955 for goods and services in classes 9 and 36. (hereinafter “Complainant’s blue and red Device mark”).
Complainant has an established Internet presence and maintains its website at <www.bitmex.com>.
Complainant claims ownership of the following portfolio of Internet domain names <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>, but in each case the WHOIS information that Complainant has provided in evidence, shows that the registrant’s identity is concealed. Complainant’s evidence in this regard therefore has no probative worth.
The disputed domain name was registered on November 8, 2022 and resolves to a website that purports to offer cryptocurrency trading services impersonating Complainant, and which displays Complainant’s BITMEX mark and “Complainant’s blue and red Device mark”.
There is no information available about Respondent except for that which is provided in the Complaint, as amended, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name for the purposes of this Complaint. The Registrar disclosed that Respondent is the registrant 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, uncontested evidence of its rights in the BITMEX mark, established by the ownership of the portfolio of trademark registrations described above by its wholly owned subsidiary and its extensive use of the mark in its cryptocurrency trading business on its platform at <www.bitmex.com>
The uncontested evidence is that since it was founded on November 24, 2014, Complainant has grown to 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.
The disputed domain name <bitmex60.com>, consists of Complainant’s BITMEX mark, in its entirety, together with the number “60 “and the gTLD extension <.com>.
Complainant’s mark is the initial, dominant, and only distinctive element in the disputed domain name. The presence of the number “60”within the disputed domain name is not prevent a finding of confusing similarity.
The context of this case, the gTLD <.com> extension would be considered by Internet users to be necessary technical element for a domain name and so adds no distinguishing character the purposes of comparison with Complainant’s mark.
Complainant has therefore succeeded in establishing the first threshold 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 arguing that
· Respondent is not identified as “Bitmex” in the WhoIs information and prior panels established under the Policy have held that a respondent did not have rights or legitimate interests in a disputed domain when there was no evidence indicating that the respondent was known by the domain name at issue;
· Respondent is not using the disputed domain name in connection with any rights or legitimate interests;
· Respondent is not sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to use Complainant’s BITMEX mark;
· Respondent is not licensed or authorized by Complainant to use the BITMEX mark;
· Respondent is not known by the disputed domain name;
· the screen capture of the website to which the disputed domain name resolves shows that beginning at least as early as December 5, 2022, Respondent has been using and continues to use the BITMEX mark in the disputed domain name and on the website to which its resolves, make a purported offering of cryptocurrency trading services;
· Respondent is also using Complainant’s red and blue logo and website images;
· such use of the disputed domain name is not legitimate and demonstrates that Respondent;
· Complainant has unsuccessfully attempted to resolve this dispute amicably, and specifically, on January 6, 2023, Complainant sent a cease and desist letter to Respondent, a copy of which has been exhibited in an annex to the Complaint in which Complainant advised Respondent of Complainant’s rights in the BITMEX marks and described Respondent’s violation of Complainant’s rights through Respondent’s use of the disputed domain name; and as of the date of filing of this Complaint it has not received any reply from Respondent. of the filing of this Complaint, and the disputed domain name continues to resolve to the same infringing webpage;
· 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 complainant’s trademark and the respondent has impersonated the complainant in an attempt to defraud unsuspecting consumers;
· furthermore, a respondent has no rights or legitimate interests in a domain name at issue where, as here, the respondent has impersonated the complainant in order to attract business away from complainant and to a competing website.
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 the BITMEX mark which predate the registration of the disputed domain name on November 8, 2022.
BITMEX is the initial, dominant and only distinctive element in the disputed domain name and is a distinctive mark with no apparent meaning other than as Complainant’s trademark and service mark.
It is improbable that the registrant of the disputed domain name was unaware of Complainant, its name, website and BITMEX mark when the disputed domain name was chosen and registered.
On the balance of probabilities, the registrant of the disputed domain name chose and registered the disputed domain name because of its confusing similarity with Complainant’s BITMEX mark to take predatory advantage of Complainant’s goodwill and reputation by confusing Internet users.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind.
The evidence shows that subsequent to its registration, the disputed domain name was used for exactly that purpose, and Respondent is using Complainant’s mark both within the disputed domain name and on the website to which it resolves to impersonate Complainant.
Additionally, Respondent is using Complainant’s blue and red Device mark on the website to which the disputed domain name resolves, while purporting to offer cryptocurrency services to confuse Internet users, falsely implying that Respondent’s website is owned, sponsored by or in some way associated with Complainant.
Such use of the disputed domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users constitutes use of the disputed domain name 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 <bitmex60.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: February 24, 2023
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