HDR Global Trading Limited v. maker
Claim Number: FA2302002031375
Complainant is HDR Global Trading Limited (“Complainant”), USA, represented by Mary D. Hallerman of SNELL & WILMER L.L.P, USA. Respondent is maker (“Respondent”), Cambodia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <m-bitmex.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.
Ho-Hyun Nahm, Esq.as Panelist.
Complainant submitted a Complaint to Forum electronically on February 10, 2023; Forum received payment on February 10, 2023.
On February 13, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <m-bitmex.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 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@m-bitmex.com. Also on February 14, 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 March 11, 2023, 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 operates a global cryptocurrency exchange platform. Complainant has rights in the BITMEX mark, in its own name or through its wholly owned subsidiary HDR SG PTE. LTD., based upon registration with the EUIPO (e.g., Reg. No. 016,462,327, registered August 11, 2017) and the international trademark registration (e.g., Reg. No. 1,514,704, registered October 10, 2019). The disputed domain name is confusingly similar because it fully incorporates Complainant’s BITMEX mark and differs only through the addition of the letter “m,” a hyphen and the “.com” generic top-level domain (“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 Respondent to use the BITMEX mark in any way. Respondent is not identified as “Bitmex” in the WhoIs information. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain name previously resolved to a webpage offering an unauthorized and fraudulent “BitMex” application for installation, as well as displaying the BITMEX marks, including the BITMEX red and blue logo. The disputed domain name currently resolves to an inactive page.
iii) Respondent registered and uses the disputed domain in bad faith. Respondent was using the disputed domain name to attempt to pass off Complainant’s services as its own in an effort to defraud the public. The disputed domain name currently resolves to an inactive page. Respondent also had actual knowledge of Complainant’s rights in the BITMEX mark prior to registration of the disputed domain. Respondent failed to respond to two cease and desist letters. It is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 10, 2022.
2. Complainant has established rights in the BITMEX mark, in its own name or through its wholly owned subsidiary HDR SG PTE. LTD., based upon registration with the EUIPO (e.g., Reg. No. 016,462,327, registered August 11, 2017) and the international trademark registration (e.g., Reg. No. 1,514,704, registered October 10, 2019).
3. The disputed domain previously resolved to an active webpage offering an application named “BitMex” for installation, as well as displaying the BITMEX marks, including the BITMEX red and blue logo.
4. The disputed domain name presently resolves to an inactive webpage.
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 mark, in its own name or through its wholly owned subsidiary HDR SG PTE. LTD., based upon registration with the EUIPO (e.g., Reg. No. 016,462,327, registered August 11, 2017) and the international trademark registration (e.g., Reg. No. 1,514,704, registered October 10, 2019). Registration of a mark with the international trademark authorities is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of trademark registrations with the EUIPO and other trademark registration authorities, the Panel finds Complainant has established rights in the BITMEX mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <m-bitmex.com> is confusingly similar to Complainant’s BITMEX mark because it wholly incorporates Complainant’s mark and is merely preceded by the letter “m” and a dash followed by the “.com” gTLD. The mere addition of a letter, a hyphen and a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). 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 Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BITMEX mark or register domain names using Complainant’s mark. 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 Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The unmasked WHOIS information associated with the disputed domain name lists the registrant as “maker.” Nothing in the records suggests that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent previously used the disputed domain name to pass off as Complainant to trick customers into downloading fraudulent “BitMex” application for installation. Using a disputed domain name to trick users into downloading malware is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use as the disputed domain name presently resolves to an inactive page. When a disputed domain name resolves to a webpage lacking content, panels have found a lack of rights and legitimate interests based on a lack of bona fide offerings of goods or services and/or legitimate noncommercial or fair uses. See Bloomberg L.P. v SC Media Servs. & Info. SRL, FA 0296583 (Forum, Sept. 2, 2004) (Finding that resolving to an empty page featuring no substantive content or links is evidence that Respondent fails to actively use the disputed domain name, suggesting a lack of rights and legitimate interests in the disputed domain name); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Complainant has provided a screenshot of the disputed domain name’s resolving webpage offering an unauthorized and fraudulent “BitMex” application for installation, as well as displaying the BITMEX marks, including the BITMEX red and blue logo. Complainant provides another webpage screenshot showing that the disputed domain name remains inactive. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii).
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 argues that Respondent registered and uses the disputed domain name in bad faith because the disputed domain previously resolved to an active webpage, allegedly offering an application named “BitMex” for installation, as well as displaying the BITMEX marks, including the BITMEX red and blue logo. Such use likely sought to disrupt Complainant’s business, as Respondent was intentionally attempting to attract Complainant’s customers for Respondent’s own commercial gain. Further, Respondent was using the disputed domain name to attempt to pass off Complainant’s services as its own in an effort to defraud the public. Where a respondent uses a disputed domain name to divert traffic, it may evince bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under 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.”). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further argues that Respondent had actual knowledge of Complainant’s rights in the BITMEX mark at the time of registering the disputed domain name. To support this assertion, Complainant points to Respondent’s use of the BITMEX mark in the disputed domain name and on the resolving webpage. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in its BITMEX mark at the time of registering the disputed domain name, which constitutes bad faith registration 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 <m-bitmex.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 13, 2023
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