DECISION

 

Bitmain Technologies Limited v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2402002082099

PARTIES

Complainant is Bitmain Technologies Limited ("Complainant"), represented by ZHAN Huawei of Han Kun Law Offices, China. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bitmain.us.com>, registered with NameCheap, Inc..

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.

 

Complainant submitted a Complaint to Forum electronically on February 2, 2024; Forum received payment on February 3, 2024.

 

On February 4, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <bitmain.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance the CentralNic Dispute Resolution Policy (the "CDRP Policy").

 

On February 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2024 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@bitmain.us.com. Also on February 9, 2024, 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 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 to the CDRP Dispute Resolution Policy ("Rules").  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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

Complainant was incorporated in 2014 and asserts trademark rights in BITMAIN which it has used internationally in connection with the offering of chips, servers, and cloud solutions used mainly in the fields of blockchain and artificial intelligence. Complainant and its affiliates have places of business in China, Singapore, the United States, and other regions.

 

Complainant holds national registrations for that trademark BITMAIN and submits that the disputed domain name is, for all practical purposes, identical to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and/or used the disputed domain name in bad faith.  In particular, Complainant asserts that a website resolving from the disputed domain name carries a company profile under the "ABOUT US" column that copies almost all the content from the "ABOUT US" column of Complainant's website and proclaims to be "BITMAIN" founded in 2013 which is a world leader in the manufacture of digital currency mining servers with subsidiaries in China, the United States, Singapore, Malaysia, Kazakhstan, and other locations.

 

Complainant further asserts that the resolving website is offering for sale identically marked computer products and model designations as those made by Complainant.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant offers chips, servers, and cloud solutions under the trademark BITMAIN;

2.       Complainant is the owner of, inter alia, Republic of Singapore Trademark Reg. No. 40201504948W, from March 24, 2015, for the mark, BITMAIN (Stylised); and

3.       the disputed domain name was registered on September 26, 2020, and resolves to a website that uses the BITMAIN trademark, another trademark owned and registered by Complainant, shows computer products for sale, and either copies or mimics an official website controlled by Complainant.

 

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 or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.  The Panel finds that prerequisite is met.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark BITMAIN with the Singaporean national trademark authority.  

 

For the purposes of comparison of the disputed domain name with the trademark, the ccTLD, "us.com", can be disregarded (us.com is the country code domain extension (ccTLD) for the United States of America and so, by analogy, see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel observes that the registered mark has stylization of the letter "A" as "L" but finds that this does not influence the comparison in a way which alters the outcome.  The Panel finds that the domain name is identical to the trademark (see, for example, Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) finding <morgan-stanley.xyz> identical to complainant's MORGAN STANLEY mark).

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the CDRP Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the CDRP Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner (Respondent) as disclosed by the Registrar does not carry any suggestion that it might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own.  The evidence accompanying the Complaint shows that the resolving website offers for sale, inter alia, mining machines - that is, computers that obtain bitcoins by running specific algorithms - by reference to Complainant's trademark and another registered trademark, ANTMINER, also owned by Complainant. Some of these goods are offered for sale under identical product numbers as those used by Complainant. Further, the resolving website is designed to create the false impression of being Complainant's website or a website under Complainant's control.

 

The Panel finds that Complainant has never authorized Respondent to sell Complainant's products or use it trademark(s) and finds that Respondent's use does not give rise to rights or a legitimate interest in the domain name (see, for example, Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) finding that a Respondent passing itself off as Complainant or Complainant's affiliate is not sufficient for bona fide commercial use).

 

A prima facie case has been made and so the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged that onus and finds the Respondent has no rights or interests. Complainant has satisfied the second limb of the CDRP Policy.

 

 

Registration or Use in Bad Faith

As set out above, the CDRP Policy requires Complainant to prove on the balance of probabilities either that the disputed domain name was registered in bad faith or used in bad faith.  That said, paragraph 4(b) of the CDRP Policy goes on to set out four circumstances which are taken to be evidence of the registration and use of a domain name in bad faith if they are established.  Of relevance to these proceedings is paragraph 4(b)(iv) which provides that:

 

(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel finds that Respondent's conduct falls under paragraph 4(b)(iv). The domain name is identical to the trademark. Confusion is inevitable.  The resolving website manifestly exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Charter Communications Holding Company, LLC v. Webdesk Two, FA 1808001800636 (Forum Sept. 5, 2018) finding bad faith in registration of <spectrumpack.com> because "[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).").

 

The Panel finds that Complainant has satisfied the third and final element of the CDRP Policy.

 

DECISION

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

 

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

 

 

 

 

Debrett G. Lyons, Panelist

Dated: March 1, 2024