HDR Global Trading Limited v. asdasd asd
Claim Number: FA2303002037989
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, US. Respondent is asdasd asd (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexpro.org>, registered with GoDaddy.com, LLC.
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 March 29, 2023; Forum received payment on March 29, 2023.
On March 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bitmexpro.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@bitmexpro.org. Also on March 30, 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 April 26, 2023, 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 owns and operates a cryptocurrency trading platform to customers around the world. Complainant asserts rights to the BITMEX trademark 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. Respondent’s <bitmexpro.org> domain name is confusingly similar to Complainant’s trademark because it contains the BITMEX trademark in its entirety, merely adding the generic term “pro” and the generic top-level domain (“gTLD”) “.org” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <bitmexpro.org> domain name. Respondent is not licensed or authorized to use Complainant’s BITMEX trademark 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. Instead, Respondent uses the disputed domain name to offer competing cryptocurrency trading services. Additionally, Respondent uses the disputed domain name to pass off as Complainant. Furthermore, Respondent is inactively holding the disputed domain name.
Respondent registered and uses the <bitmexpro.org> domain name in bad faith. First, Respondent registered and uses the disputed domain name in competition with Complainant. Second, Respondent registered and uses the disputed domain name to pass off as Complainant. Third, Respondent failed to respond to a cease and desist letter, showing bad faith registration and use. Fourth, Respondent’s inactive holding shows bad faith registration and use. Finally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the BITMEX trademark.
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, 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.
Respondent registered the <bitmexpro.org> domain name was registered on May 16, 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 registration with multiple trademark agencies including the UKIPO (e.g., Reg. No. 00003218498, registered June 2, 2017). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark 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).”). Therefore, the Panel find that Complainant has rights in the BITMEX trademark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
Complainant contends that Respondent’s <bitmexpro.org> domain name is confusingly similar to Complainant’s trademark because it contains the BITMEX trademark in its entirety, merely adding the generic term “pro” and the generic top-level domain (“gTLD”) “.org” to form the disputed domain name. The addition of a generic term and a gTLD to a complainant’s trademark does not sufficiently distinguish a disputed domain name. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
Therefore, the Panel find that the disputed 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 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 claims that Respondent does not have rights or legitimate interests in the <bitmexpro.org> domain name as Respondent is not licensed or authorized to use Complainant’s BITMEX trademark 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 “asdasd asd”. Thus, the Panel find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent does not use the <bitmexpro.org> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to offer competing cryptocurrency trading services. The use of a disputed domain name to offer services that compete directly with a complainant’s business is not a 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). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a 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).”); see also 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 allegedly offering cryptocurrency trading services, while using Complainant’s BITMEX trademarks. Thus, the Panel may find 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).
Additionally, Complainant contends that Respondent uses the <bitmexpro.org> domain name to pass off as Complainant. An attempt to use a disputed domain name to pass off as a complainant is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s trademark and various photographs related to the complainant’s business); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Here, Complainant offers a screenshot of the disputed domain name’s resolving website allegedly offering cryptocurrency trading services, while using Complainant’s BITMEX trademarks. Therefore, the Panel find 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).
Furthermore, Complainant argues that Respondent is inactively holding the <bitmexpro.org> 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). In support, Complainant offers a screenshot of the disputed domain name showing the website resolving to an inactive website. The Panel agrees with the Complainant’s conclusion, and find 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).
Complainant asserts that Respondent registered and uses the <bitmexpro.org> domain name in bad faith as Respondent registered and uses the disputed domain name in competition with the Complainant. The use of a confusingly similar domain name to attract internet users to a website where competing services are offered supports a finding of bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also 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).”). Here, Complainant offers a screenshot of the disputed domain name’s resolving website allegedly offering cryptocurrency trading services, while using Complainant’s BITMEX trademarks. As such, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Second, Complainant contends that Respondent registered and uses the <bitmexpro.org> domain name to pass off as the Complainant. The use of a disputed domain name to pass off as a complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(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); see also Russell & Bromley Limited v. Li Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). In the present case, as noted above, as support, Complainant offers a screenshot of the disputed domain name’s resolving website allegedly offering cryptocurrency trading services, while using Complainant’s BITMEX trademarks. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Third, Complainant argues that Respondent failed to respond to a cease and desist letter, showing bad faith registration and use. 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). Here, Complainant has provided a copy of two cease and desist letters sent to Respondent dated May 24, 2022 and June 6, 2022 both of which, Complainant asserts, went unanswered. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourth, Complainant claims that Respondent’s inactive holding of the <bitmexpro.org> domain name shows bad faith registration and use. Using a disputed domain name to resolve to an inactive website may indicate bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”); see also Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant offers a screenshot of the disputed domain name showing the website resolving to an inactive website. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent registered and uses the <bitmexpro.org> domain name with actual knowledge of Complainant’s rights in the BITMEX trademark. Here, Complainant points to the distinctiveness of its BITMEX trademark, the use of Complainant’s BITMEX trademark, the offering of competing cryptocurrency trading services, and the use of its trademark in the disputed domain name. Based on the use, the Panel determine that the Respondent did have actual knowledge of Complainant’s right in its trademark, which support a finding of 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 <bitmexpro.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 29, 2023
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