HDR Global Trading Limited v. Whois Privacy Protection Foundation / Hosting Concepts BV d/b/a Registrar.eu
Claim Number: FA2301002029939
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, US. Respondent is Whois Privacy Protection Foundation / Hosting Concepts BV d/b/a Registrar.eu (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexinvestmentoptions.com>, registered with OwnRegistrar, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 31, 2023; Forum received payment on January 31, 2023.
On February 1, 2023, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <bitmexinvestmentoptions.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 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@bitmexinvestmentoptions.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 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions.
Complainant, HDR Global Trading Limited, owns and operates a cryptocurrency trading platform to customers around the world. Complainant asserts rights to the BITMEX mark based upon registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., reg. no. 00,003,218,498, registered on June 2, 2017), and other trademark agencies worldwide. See Compl. Annex 1-6. Respondent’s <bitmexinvestmentoptions.com> domain name is confusingly similar to Complainant’s mark because it contains the BITMEX mark in its entirety, merely adding the descriptive terms “investment” and “options”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <bitmexinvestmentoptions.com> domain name. Respondent is not licensed or authorized to use Complainant’s BITMEX mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. First, Respondent uses the disputed domain name to offer services that directly compete with Complainant. Second, Respondent uses the disputed domain name to pass off as Complainant. Third, Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <bitmexinvestmentoptions.com> domain name in bad faith. First, Respondent targeted Complainant’s BITMEX mark for the purpose of obtaining commercial gain by offering competing services. Second, Respondent uses the disputed domain name to pass off as Complainant. Third, Respondent failed to respond to cease and desist letters. Fourth, Respondent’s use of a privacy shield shows bad faith. Fifth, Complainant argues that Respondent fails to make an active use of the disputed domain name which is obviously connected with Complainant’s mark. Finally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complaint is a Republic of Seychelles company that owns and operates a cryptocurrency trading platform for customers around the world.
2. Complainant has established its rights to the BITMEX mark based upon its registration of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., reg. no. 00,003,218,498, registered on June 2, 2017), and other trademark agencies worldwide.
3. Respondent registered the disputed <bitmexinvestmentoptions.com> domain name on March 13, 2022.
4. Respondent has caused the disputed domain name to be used to offer services that directly compete with Complainant and to pass itself off as Complainant, and Respondent also fails to make an active use 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the BITMEX mark based upon registration of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., reg. no. 00,003,218,498, registered on June 2, 2017), and other trademark agencies worldwide. See Compl. Annex 1-6. Registration of a mark with multiple international trademark authorities conveys rights in that mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Here, Complainant has provided evidence of registration with the UKIPO and other trademark authorities. Therefore, as the Panel agrees, it finds Complainant has established its rights in the BITMEX mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITMEX mark. Complainant contends that Respondent’s <bitmexinvestmentoptions.com> domain name is confusingly similar to Complainant’s mark because it contains the BITMEX mark in its entirety, merely adding the descriptive terms “investment” and “options”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name. The addition of descriptive terms and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See 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 that the disputed domain name is confusingly similar to the BITMEX mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BITMEX mark and to use it in its domain name, adding the descriptive words “investment” and “options” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <bitmexinvestmentoptions.com> domain name on March 13, 2022;
(c) Respondent has caused the disputed domain name to be used to offer services that directly compete with Complainant and to pass itself off as Complainant, and Respondent also fails to make an active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent does not have rights or legitimate interests in the <bitmexinvestmentoptions.com> domain name as Respondent is not licensed or authorized to use Complainant’s BITMEX mark and is not commonly known by the disputed domain name. 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 WHOIS information for the disputed domain name lists the registrant as “Whois Privacy Protection Foundation/Hosting Concepts BV d/b/a Registrar.eu”. See Registrar Verification Email. Thus, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent does not use the <bitmexinvestmentoptions.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. First, Respondent uses the disputed domain name to offer services that directly compete with Complainant. The use of a disputed domain name to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant offers a screenshot of the disputed domain name’s resolving website dated June 13, 2022 offering cryptocurrency trading services. See Compl. Annex 19. Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);
(g) Complainant contends that Respondent uses the <bitmexinvestmentoptions.com> domain name to pass itself off as Complainant. The use of a disputed domain name to pass off as a complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant offers screenshots of its own website and the disputed domain name’s resolving website, and points to the similarities between the two, as well as the prominent display of Complainant’s mark on the disputed domain name’s resolving website. See Compl. Annex 8-13; Compl. Annex 19. As such, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);
(h) Complainant submits that Respondent fails to make an active use of the <bitmexinvestmentoptions.com> domain name. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”. Here, Complainant offers a screenshot of the disputed domain name’s resolving website dated January 28, 2023, showing a “site can’t be reached” error. See Compl. Annex 20. Thus, as the Panel agrees, it finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <bitmexinvestmentoptions.com> domain name in bad faith because Respondent targeted Complainant’s BITMEX mark for the purpose of obtaining commercial gain by offering competing services. The use of a disputed domain name to display services similar to Complainant’s, imputes an intent to attract Internet users for commercial gain, and supports a finding of bad faith per Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). As evidence, Complainant tenders a screenshot of the disputed domain name’s resolving website dated June 13, 2022 offering cryptocurrency trading services. See Compl. Annex 19. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent uses the <bitmexinvestmentoptions.com> domain name to pass itself off as Complainant. The use of a disputed domain name to resolve to a website to pass off as a complainant to offer services in direct competition with the complainant’s business shows 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). Here, Complainant offers screenshots of its own website and the disputed domain name’s resolving website, and points to the similarities between the two, as well as, the prominent display of Complainant’s mark on the disputed domain name’s resolving website and the offering of competing cryptocurrency services. See Compl. Annex 8-13; Compl. Annex 19. As such, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant submits that Respondent failed to respond to cease and desist letters. The failure to respond to a cease-and-desist demand letter constitutes bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). As support, Complainant offers printouts of two letters to Respondent, dated March 29, 2022 and April 18, 2022 respectively, as well as a letter to and response from the hosting service both dated May 23, 2022. See Compl. Annex 15-18. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends Respondent’s use of a privacy shield shows bad faith. The use of a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 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.”). Here, Complainant offers a screenshot of the WHOIS information for the disputed domain name showing the registrant as “Whois Privacy Protection Foundation/Hosting Concepts BV d/b/a Registrar.eu”. See Compl. Annex 21. As such, as the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent fails to make an active use of the <bitmexinvestmentoptions.com> domain name which is obviously connected with Complainant’s mark. A finding of bad faith registration and use is proper where (1) the respondent failed to make use of the disputed domain name; and (2) where respondent knew or should have known of the complainant’s famous mark. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s famous GALLO marks and (2) the respondent made no use of the domain name <winegallo.com>). Here, Complainant offers printouts of third-party articles to show the fame of the BITMEX marks and a prior UDRP case, as well as a screenshot of the disputed domain name’s resolving website dated January 28, 2023, showing a “site can’t be reached” error. See Compl. Annex 14; Compl. Annex 20; see also HDR Global Trading Limited v. Ni Cary, FA2111001972574 (Forum December 15, 2021). Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Sixthly, Complainant submits that Respondent registered and uses the <bitmexinvestmentoptions.com> domain name with actual knowledge of Complainant’s rights in the BITMEX mark. The Panel will determine whether Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant points to the distinctiveness of its mark and the use of its mark in the disputed domain name. See Compl. Annex 9-14. Therefore, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitmexinvestmentoptions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 26, 2023
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