DECISION

 

HDR Global Trading Limited v. ai deny

Claim Number: FA2308002059765

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bitmexsit.com>, <bitmexsus.com> and <bitmexusit.com>, ('the Domain Names') registered with Dynadot Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

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

 

On August 30, 2023, Dynadot Inc confirmed by e-mail to Forum that the <bitmexsit.com>, <bitmexsus.com> and <bitmexusit.com> Domain Names are registered with Dynadot Inc and that Respondent is the current registrant of the names. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc 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@bitmexsit.com, postmaster@bitmexsus.com, and postmaster@bitmexusit.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 Dawn Osborne 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 Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant through a wholly owned subsidiary is the owner of the mark BITMEX, registered in the EU for financial services since 2017. It owns bitmex.com.

 

The Domain Names registered in 2023 are confusingly similar to the Complainant's mark containing it in its entirety and adding only the letters 'sit', 'sus' or 'usit', and the gTLD .com none of which prevents confusing similarity.

 

The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.

 

The Domain Names have all been pointed to the same site offering competing financial services using the Complainant's BITMEX mark and logo in their mastheads (although bitmexusit.com currently points to an inactive site.) This is not a bona fide offering of goods or services or legitimate use. It is registration and use in opportunistic bad faith with actual knowledge of the Complainant and its rights causing confusion amongst Internet users for commercial gain and disrupting the Complainant's business. Passively holding a domain name containing the trade mark of another is bad faith per se. The Respondent did not respond to a cease and desist letter from the Complainant and has used a privacy service.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant through a wholly owned subsidiary is the owner of the mark BITMEX, registered in the EU for financial services since 2017. It owns bitmex.com.

 

The Domain Names registered in 2023 have all been pointed to a site offering competing financial services using the Complainant's BITMEX mark and logo in its masthead (although bitmexusit.com currently points to an inactive site).

 

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

The Domain Names consist of the Complainant's BITMEX mark (which is registered in the EU for financial services as of March 2017), the letters  'sit', 'sus' or 'usit', and the gTLD .com.

 

Under Policy 4(a)(i), adding individual letters is insufficient to prevent confusing similarity between a domain name and a complainant's mark under the Policy. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds "the letters 'btc' and the gTLD .com which do not distinguish the Domain Name from Complainant's mark"). The Panel holds that adding the letters 'sit', 'sus' or 'usit' does not prevent confusing similarity between each of the Domain Names respectively and the Complainant's mark.

 

The gTLD .com does not serve to distinguish a domain name from a complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are each confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by any of the Domain Names. 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 use of the Domain Names is commercial and so is not legitimate non commercial or fair use.

 

The web site attached to the Domain Names used the Complainant's BITMEX mark and logo in its masthead to offer competing financial services and to suggest a commercial connection with the Complainant. The Panel finds this use was deceptive. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services). 

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out above.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The use made of the Domain Names in relation to the Respondent's competing cryptocurrency site was confusing and disruptive in that visitors to the site might reasonably have believed that it was connected to or approved by the Complainant as the Complainant's BITMEX mark and logo was used in the masthead of the Respondent's web site without permission for competing financial services.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See also Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).

 

Bitmexusit.com is currently being passively held. Passive holding of a domain name containing a mark with a reputation is generally bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were all registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).

 

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 <bitmexsit.com>, <bitmexsus.com> and <bitmexusit.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: September 21, 2023