DECISION

 

HDR Global Trading Limited v. Osborn Wokoma

Claim Number: FA2308002059734

 

PARTIES

Complainant is HDR Global Trading Limited ("Complainant"), USA, represented by Mary D. Hallerman of SNELL & WILMER L.L.P, District of Columbia, USA. Respondent is Osborn Wokoma ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bitmexespanol.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 30, 2023; Forum received payment on August 30, 2023.

 

On August 31, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <bitmexespanol.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 August 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@bitmexespanol.com. Also on August 31, 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 September 21, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, HDR Global Trading Limited, owns and operates a cryptocurrency-based virtual trading platform. Complainant has rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the European Union Intellectual Property Office ("EUIPO") (e.g., Reg. No. 16,462,327, registered August 11, 2017). The disputed domain name is virtually identical and confusingly similar to Complainant's BITMEX mark because it contains the mark in its entirety, merely adding the non-distinctive element "espanol." and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the BITMEX mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent previously used the disputed domain name to offer purported cryptocurrency exchange services that compete with Complainant. The disputed domain now resolves to an inactive webpage.

 

iii) Respondent registered and used the disputed domain name in bad faith. Respondent capitalized on the goodwill associated with Complainant's mark for commercial gain. The disputed domain currently redirects users to an inactive webpage. Additionally, Respondent had actual knowledge of Complainant's rights in the BITMEX mark when it registered the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 23, 2023.

 

2. Complainant has rights in the BITMEX mark based upon the registration with multiple trademark organizations, including the EUIPO (e.g., Reg. No. 16,462,327, registered August 11, 2017).

 

3. Respondent previously used the disputed domain name to redirect users to a site offering a competing cryptocurrency exchange services while displaying Complainant's mark.

 

4. The disputed domain now resolves to an inactive webpage.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the BITMEX mark based upon the registration through its wholly owned subsidiary HDR SG PTE. LTD., with multiple trademark organizations, including the EUIPO. Registration of a mark with a trademark agency is generally considered to be a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) ("Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i)."). Complainant provides evidence of registration of the BITMEX mark with the EUIPO (e.g., Reg. No. 16,462,327, registered August 11, 2017). Thus, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name is confusingly similar to Complainant's BITMEX mark because it contains the mark in its entirety, merely adding the generic term "espanol" and the ".com" gTLD.  Addition of a generic term and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) ("Respondent merely adds the term 'supports' and a '.org' gTLD to the DELL mark. Therefore, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's DELL mark per Policy ¶ 4(a)(i)."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's BITMEX mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 claims Respondent does not have rights or legitimate interests in the disputed 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, FA 1613011 (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, FA 1574905 (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 unmasked WHOIS information for the disputed domain name lists the registrant as "Osborn Wokoma." Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent previously used the disputed domain name to offer purported cryptocurrency exchange services that compete with Complainant. The use of a disputed domain name to offer goods and/or services that compete with a complainant's business 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 Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) ("Respondent's use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use" where "Respondent is apparently using the disputed domain name to offer for sale competing services."); 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)."). Complainant provides a screenshot of the disputed domain name's previous resolving website, which purported to offer cryptocurrency exchange services, that is closely related to the services offered by Complainant. Complainant also provides a screenshot of the disputed domain name's resolving website showing that the domain now resolves to an inactive webpage. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 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.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the disputed domain name in bad faith as Respondent registered and previously used the disputed domain name to offer purported cryptocurrency exchange services that compete with Complainant. The use of a disputed domain name to offer competing services and/or goods is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant."); see also Bank of America, National Association v. Marcos Alexis Nelson, FA 1621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered). The Panel recalls that Complainant provides a screenshot of the disputed domain name's previous resolving website, which prominently displayed "BITMEXESPANOL" mark which is confusingly similar to Complainant's BITMEX mark and to offer purported cryptocurrency exchange services, that is closely related to the services offered by Complainant. As such, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent registered and uses the disputed domain name with actual knowledge of Complainant's rights in the BITMEX mark. Complainant points to its prior use of the BITMEX mark prior to Respondent's registration of the disputed domain name and Respondent's previous use of the disputed domain name to offer cryptocurrency exchange services, that is closely related to the services offered by Complainant. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the BITMEX mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bitmexespanol.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: September 24, 2023