HDR Global Trading Limited v. Repossessed by Go Daddy
Claim Number: FA2302002033122
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, Washington, D.C., USA. Respondent is Repossessed by Go Daddy (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitmex.plus> and <bitmex.city>, both registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on February 23, 2023; Forum received payment on February 23, 2023.
On February 24, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bitmex.plus> and <bitmex.city> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@bitmex.plus, postmaster@bitmex.city. Also on February 27, 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 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
(1) the substantive portions of the two domain names are identical in containing only the entirety of Complainant’s BITMEX mark;
(2) both of the domain names recite the same privacy information;
(3) both employ the same privacy service;
(4) the two domain names were registered four days apart in time;
(5) the domain names were registered with the same registrar; and
(6) for most of their existence, both domain names resolved to the same content.
Because Respondent does not refute any of these assertions, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel determines that Complainant’s request must be granted. Accordingly, this Decision will refer to the identified respondents throughout as a single Respondent. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same domain name holder.
A. Complainant
Complainant owns and operates a global cryptocurrency trading platform.
Through its wholly-owned subsidiary HDR SG PTE LTD, Complainant holds an international registration for the BITMEX trademark, which is on file as Registry No. 1514704, registered October 10, 2019.
Respondent registered the domain names <bitmex.plus> and <bitmex.city> on May 4, 2022, and May 7, 2022, respectively.
Both domain names are identical and confusingly similar to Complainant’s BITMEX mark.
Respondent lacks rights to or legitimate interests in the domain names.
Respondent has not been commonly known by either of the domain names.
Respondent is neither sponsored nor endorsed by Complainant.
Respondent is not authorized by Complainant to use the BITMEX mark.
Respondent is not using the domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
As of the date of filing of the Complaint in this proceeding, the domain names resolved to inactive webpages.
Respondent knew of Complainant’s rights in the BITMEX mark when it registered the domain names.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bitmex.plus> and <bitmex.city> domain names are each substantively identical and confusingly similar to Complainant’s BITMEX mark. The domain names contain the mark in its entirety, with only the addition of a generic Top Level Domain (“gTLD”), “.plus” in one instance and “.city” in the other. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), [like] “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4 (a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <bitmex.plus> and <bitmex.city> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the <bitmex.plus> and <bitmex.city> domain names, and that Complainant has not authorized Respondent to use the BITMEX mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Repossessed by Go Daddy,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant alleges, and, again, Respondent does not deny, that Respondent has disrupted Complainant’s business by using the two domain names to pass itself off as Complainant online in order to confuse and defraud Internet users by purporting to offer Complainant’s cryptocurrency services. In the circumstances here presented, we may comfortably presume that Respondent has employed the domain names in the manner described in the Complaint to profit financially.
Complainant further asserts, without objection from Respondent, that, as of the date of filing of the Complaint in this proceeding, the domain names resolved to inactive webpages.
As to Respondent’s prior use of the domain names, we must conclude that using them to pass off Respondent as Complainant online in furtherance of a scheme to profit by defrauding unsuspecting Internet users is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy.
The same must be said of Respondent’s current failure to make any active use of the domain names following its active abuse of them. See, for example, Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum August 3, 2017):
When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <bitmex.plus> and <bitmex.city> domain names, as alleged in the Complaint, was a deliberate attempt by Respondent to profit illicitly from the confusion caused among Internet users by the confusing similarity between the domain names and Complainant’s mark. Under Policy ¶ 4(b)(iv), such a use of the domain names demonstrates Respondent’s bad faith in registering and using them. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a disputed domain name to pass a respondent off as a UDRP complainant in furtherance of a fraudulent scheme was evidence of bad faith registration and use of the domain name).
As to Respondent’s current passive holding of the domain names, in the circumstances here presented, this, too, evidences Respondent’s bad faith registration and use of them. See, for example, VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, under this head of the Policy, it is plain from the record before us that Respondent knew of Complainant and its rights in the BITMEX trademark when Respondent registered the offending domain names. This further demonstrates Respondent’s bad faith in registering them. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met adequately its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bitmex.plus> and <bitmex.city> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 30, 2023
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