HDR Global Trading Limited v. star
Claim Number: FA2306002051351
Complainant is HDR Global Trading Limited (“Complainant”), represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is star (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitmexa.top>, 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 June 29, 2023; Forum received payment on June 29, 2023.
On June 29, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <bitmexa.top> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. 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 July 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 24, 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@bitmexa.top. Also on July 3, 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 July 27, 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 trademark and service mark established by the portfolio of registrations described below, which are held by itself and its wholly owned subsidiary. Additionally, Complainant claims to have established an extensive goodwill and reputation in the mark by long and extensive use on Complainant’s financial services trading platform.
Founded on November 24, 2014, Complainant submits that its prominent cryptocurrency trading platform is marketed to millions of consumers around the world in six languages, adding that it has been providing financial trading services in the field of digitized assets and cryptocurrencies since its inception.
Complainant further submits that its business currently averages a trading volume of several hundreds of millions to a billion dollars per day and it has grown to become one of the largest cryptocurrency trading platforms, servicing customers all over the world.
In support of this claim, Complainant has provided screen captures of its trading platform and third party media articles.
Complainant firstly alleges that the disputed domain name is confusingly similar to Complainant’s BITMEX mark as it incorporates the mark in its entirety.
Here, the disputed domain merely adds the letter “a” to the BITMEX mark, which Complainant argues does nothing to distinguish the disputed domain from the mark. Citing HDR Global Trading Limited v. zhangsan, FA 2025576 (Forum Jan. 24, 2023) (“The disputed domain name consists of a misspelling of Complainant’s BITMEX mark (an “s” is added in between “bit” and “mex”) and merely adds the letters “cim” and the generic top level domain (“gTLD”) “.com”. Such changes do not defeat an argument of confusing similarity per Policy ¶ 4(a)(i).”).
Complainant adds that neither does the addition of the generic Top-Level Domain (“gTLD”) suffix <.top> distinguish the disputed domain from the BITMEX mark, citing 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 sponsored or endorsed by Complainant.
Complainant asserts that it has never authorized or licensed Respondent to use the BITMEX mark.
Referring to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, which shows that the website purports offer cryptocurrency trading services under Complainant’s BITMEX mark and the logo which is the subject of Complainant’s U.K. Trade Mark Red and Blue Device, registration number 00003390955, and is also incorporated in its device mark.
Complainant submits that other 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 issue includes a complainant’s trademark and the respondent has impersonated the complainant in an attempt to defraud unsuspecting consumers. Citing G4S Plc v. Mathia Klif, WIPO Case No. D2020-0158 (WIPO Mar. 20, 2020) (“[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, it is submitted that Respondent is not identified as “Bitmex” in the WhoIs information for the disputed domain name. Prior panels 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 disputed domain name. Citing Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248189542 / Gary Gasgstetter, WIPO Case No. D2020-2778 (WIPO Dec. 17, 2020) (“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 a respondent has no rights or legitimate interests in a domain name where, as here, the respondent has impersonated the complainant in order to attract business away from complainant and to a competing website.
Additionally, Complainant argues that Respondent is not using the disputed domain in connection with any rights or legitimate interests, because Respondent is not licensed or authorized by Complainant to use the BITMEX mark.
Furthermore, it is contended that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it resolves to a website purporting to offer cryptocurrency trading services under Complainant’s BITMEX mark. Complainant submits that such use is not a legitimate and demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent registered the disputed domain name to capitalize on the goodwill associated with Complainant’s rights in the BITMEX mark to confuse consumers as to the source and/or ownership of the disputed domain name.
Complainant adds that it has spent years building its cryptocurrency trading platform and has acquired rights in the BITMEX mark and consequently, Complainant and the BITMEX mark are recognized internationally.
Complainant alleges that Respondent sought to exploit Complainant’s success by registering the disputed domain name years after Complainant acquired rights in the BITMEX mark and years after Complainant began building its cryptocurrency trading platform under those marks. See HDR Global Trading Limited v. A Si Di Fen Teng Ren, FA 1975598 (Forum Dec. 31, 2021) (“In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not the Policy.”).
Complainant contends that the BITMEX mark is distinctive and when Respondent registered the disputed domain name, Respondent had actual knowledge of Complainant’s mark as is evident through Respondent’s use of the BITMEX Marks in the Disputed Domain, and on the resolving webpage. See HDR Global Trading Limited v. Ni Cary, FA 1972574 (Forum Dec. 15, 2021) (“The Panel notes in particular the distinctiveness and fame of Complainant’s mark; the fact that Respondent must have been aware of Complainant’s mark; the implausibility of any good faith use to which the domain name may be put; and Respondent’s failure to provide a response or to provide any evidence of actual or contemplated good-faith use. Accordingly, the Panel finds Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the <bitmex.site> domain name was registered and is being used in bad faith by Respondent.”).
Despite Respondent’s actual knowledge of Complainant and the BITMEX mark, Respondent proceeded to register the disputed domain name. Complainant argues that a respondent’s actual knowledge of a complainant’s trademark when registering a domain name which incorporates a distinctive trademark is sufficient to support an inference of bad faith. Citing Valio Oy v. Muhammad Tayab, Dairy Engineering Int’l, WIPO Case No. D2017-2376 (WIPO Feb 5, 2018) (“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.”).
Complainant adds that the disputed domain name resolves to an active webpage, purporting to offer competing cryptocurrency trading services. Such use is likely sought to disrupt Complainant’s business, as Respondent intentionally attempted to attract Complainant’s customers for Respondent’s own commercial gain. See, e.g., HDR Global Trading Limited v. Client Care / Web Commerce Communications Limited, FA 2025570 (Forum Jan. 24, 2023) (“Respondent registered a domain name incorporating Complainant's mark. Respondent is using the domain name in what appears to be an attempt to pass off as Complainant and promote competing services, and has failed to come forward with any explanation for its selection or use of the domain name. Such conduct is indicative of bad faith registration and use under the Policy.”).
Complainant submits that prior panels established under the Policy have held that a domain name at issue was registered and being used in bad faith when it resolved to a website offering goods or services competing with a complainant. See, e.g., DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne, WIPO Case No. D2018-2565 (WIPO Dec. 20, 2018) (“It seems clear that the use of the Complainant’s mark in the Domain Name and the use of the Complainant’s box logo is an attempt to cause people to associate the web site at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his web site by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor. As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.”).
Furthermore, Complainant submits that not only is Respondent offering competing services, but is attempting to pass off Complainant’s services as its own in an effort to defraud the public. See. e.g., HDR Global Trading Limited v. Host Master / 1337 Services LLC, FA 1859000 (Forum Sept. 28, 2019) (finding that using a disputed domain name to pass off services as complainant’s is bad faith under Policy ¶ 4(b)(iv).).
Under the circumstances of this case, Complainant submits that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate[.]” Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Feb. 18, 2000) (finding bad faith use).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services on its cryptocurrency trading platform at <www.bitmex.com> using the BITMEX mark; and together with its wholly owned subsidiary is HDR SG PTE. LTD., Singapore. are the proprietors of a portfolio of trademark registrations which include:
· International Trademark BITMEX, registration number 1514704, registered on October 10, 2019 for goods and services in classes 9 and 36,
· European Union Registered Trademark BITMEX (& Design) registration number 016462327, registered on August 11, 2017 for services in class 36;
· U.K. Trademark BITMEX Registration No. 00003218498, registered on June 2, 2017 for services in class 36;,
· U.K. Trademark BITMEX & Device, registration No. 00003390977 registered on June 28, 2019 for services in classes 9 and 36;
· U.K. Trademark Red and Blue Device, registration number 00003390955, registered on April 10, 2019 for goods and services in classes 9 and 36.
Complainant has an established Internet presence with its online cryptocurrency trading platform and is the owner of the following domain names <bitmex.com>, <bitmex.finance>, <bitmex.financial>, <bitmex.money>, <bitmex.exchange>, and <bitmex.info>.
The disputed domain name <bitmexa.top> was registered on April 29, 2023 and resolves to a website which purports to impersonate Complainant using Complainant’s BITMEX mark and logo device to pass off Respondents purported services as those of Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the BITMEX mark, established by the ownership with its wholly owned subsidiary of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use on its cryptocurrency trading platform.
Confusing Similarity
The disputed domain name consists of Complainant’s BITMEX mark in its entirety in combination with the letter “a” and the gTLD extension <.top>.
Complainant’s BITMEX mark is the initial, dominant, and only distinctive element in the disputed domain name. The addition of the letter “a” does not add any distinguishing character and its addition to Complainant’s mark within the disputed domain name does not prevent a finding of confusing similarity.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the BITMEX mark, and Complainant has therefore succeeded in the first 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 sponsored or endorsed by Complainant;
· Complainant has never authorized or licensed Respondent to use the BITMEX mark;
· the screen capture of the website to which the disputed domain name resolves which is annexed to the Complaint, which shows that Complainant is using the website purporting to offer cryptocurrency trading services under Complainant’s BITMEX mark and the red and blue logo which is also a registered trademark;
· Respondent has impersonated Complainant in an attempt to defraud unsuspecting consumers;
· Respondent is not identified as “Bitmex” in the WhoIs information for the disputed domain name;
· Respondent is using the disputed domain name to impersonate Complainant in order to attract business away from complainant and to a competing website which does not create rights or legitimate interests in the disputed domain name;
· Respondent is not making a legitimate noncommercial or fair use of the disputed domain as it resolves to a website purporting to offer cryptocurrency trading services under Complainant’s BITMEX mark.
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 and first use of the disputed domain name on April 29, 2023.
The BITMEX mark is distinctive and Complainant has shown that it has established a substantial international reputation and goodwill in its cryptocurrency trading platform.
It is most improbable that the disputed domain name which is composed of only the BITMEX mark to which is added the final letter “a”, in combination with the gTLD extension, was chosen and registered without knowledge of Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant’s goodwill and reputation in the mark.
The screen capture of the website to which the disputed domain name resolves which has been exhibited in evidence in an annex to the Complaint, shows that Respondent is intentionally using Complainant’s name within the disputed domain name, and Complainant’s BITMEX mark and red and blue logo on the website, to create the false impression that Complainant is the owner of, or has some association with Respondent’s website. The website purports to offer cryptocurrency services identical to those offered by Complainant.
By purporting to impersonate Complainant and pass off and misrepresent Respondent’s purported financial services offerings as those of Complainant, Respondent is using the disputed domain name in bad faith, to attract and confuse Internet users, and to misdirect Internet traffic to Respondent’s website.
The lengths to which Respondent has gone to impersonate Complainant’s website, gives great cause for concern for any Internet user who is thereby deceived and lured to Respondent’s website.
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 <bitmexa.top> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC, Panelist
Dated: July 26, 2023
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