The Complainant is Bitmain Technologies Limited of Kowloon, Hong Kong, China, represented by Kim & Chang, Republic of Korea.
The Respondent is Privacy Protect, LLC of Burlington, Massachusetts, United States of America ("United States") / Stefan Nagies, Icon of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2018, providing the registrant and contact information disclosed by the Registrar, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 2018. On July 9, 2018, the Complainant submitted a revised amended Complaint. On July 7, 2018, the Respondent sent an informal communication to the Center.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2018. The Respondent did not submit a formal response. On August 2, 2018, the Center notified the Parties that it would proceed to panel appointment shortly.
The Center appointed Jon Lang as the sole panelist in this matter on August 9, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Domain Name was registered on November 1, 2017. It resolves to a website (the "Website") promoting the services and products of a third party cryptocurrency business.
BITMAIN is the trade name of the Complainant and the group of companies to which the Complainant belongs (collectively, the "Bitmain Companies"), and is the trademark used by the Bitmain Companies for their bitcoin products and services.
Bitmain Technologies Inc. (to which the Complainant is related) was incorporated in Beijing, China in 2013, since when it has become what is said to be the world's largest bitcoin mining services company. It has offices across China, including Shenzhen, Qingdao, and Hong Kong, and in the Netherlands, Singapore, Georgia, and other countries. Bitmain Technologies Inc. produces and sells bitcoin mining machines and also operates mining pools. The Complainant is the Hong Kong branch of the group responsible for exporting products bearing the BITMAIN Mark.
The Bitmain Companies had profits of around USD 2.5 billion in 2017 alone from its sales of BITMAIN products and provision of related services. The Bitmain Companies have a dominant global market share of 70% to 80% of the bitcoin mining market.
Prior to November 1, 2017 (when the Domain Name was registered), the Complainant obtained trademark registrations for the BITMAIN Mark in connection with goods and services in Classes 9, 36, and 42 in the European Union, the United States, China, Hong Kong (China) and Singapore, for instance European Union Trade Mark Registration No: 013913521 (with a registration date of August 31, 2015). 5. Parties' Contentions
The following is a summary of the Parties' contentions. Complainant
General
The BITMAIN Mark is the trade name and trademark used by the Bitmain Companies in relation to all products and services they provide, including bitcoin miners and power suppliers. The BITMAIN Mark has been continuously and actively used by the Bitmain Companies since 2013 and, as a result, is widely recognized as the source identifier of the Bitmain Companies among traders and consumers worldwide.
The Domain Name causes damage to the Complainant. It resolves to the Website which promotes the services and products of "Bitmain Korea Inc.", a cryptocurrency business. The name "Bitmain Korea" is prominently displayed on the Website and cryptocurrency miners and accessories are offered for sale.
The Respondent has been using the Domain Name as the address for the Website without the Complainant's authorization and despite having no rights or legitimate interests in the BITMAIN Mark or name. The Respondent is thereby obtaining unfair profits by using the Complainant's trade name to attract Internet users to the Website.
The Domain Name is identical or confusingly similar to the BITMAIN Mark
The Domain Name is a combination of "bitmain" and "Korea", and ".co". Since "Korea" is simply a geographic designation and ".co" is the national domain code extension for Colombia, the dominant portion of the Domain Name is "bitmain", which is identical to the BITMAIN Mark. The Domain Name is substantially identical or confusingly similar to the BITMAIN Mark.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent has no connection to the Bitmain Companies, has no legitimate rights in the BITMAIN Mark and has received no authorization to use the Mark.
The results of a Google search conducted by the Complainant shows that the Respondent (Stefan Nagies) is the CEO of a company called "CTLeading" based in Thailand, which appears to have been involved in bitcoin mining since 2015; is the Managing Director of Internetwork Consulting Co Ltd., based in Thailand, which focuses on "FinTech Solutions and Blockchain Application including but not limited to Cryptocurrencies"; and is the registrant of at least another 24 domain names, most of which include the term "bitcoin", "coin" or "cryptocoin".
The Complainant's search did not uncover anything that links the Respondent to the Website.
At the time the Domain Name was registered, neither the Respondent nor "Bitmain Korea Inc." was commonly known by the Domain Name.
"Bitmain Korea Inc.'s" use of the BITMAIN Mark as its trade name constitutes an unfair competition act prohibited under the Korean Unfair Competition Prevention and Trade Secret Protection Act (the "UCPA").
The BITMAIN Mark was widely known among general consumers in the Republic of Korea as a source identifier of the Bitmain Companies before registration of the Domain Name and before "Bitmain Korea Inc." adopted the Mark as their tradename on December 19, 2017.
"Bitmain Korea Inc.'s" act of using "Bitmain Korea" as the name of their bitcoin mining related businesses is highly likely to mislead or confuse Korean consumers, leading them to believe that "Bitmain Korea Inc." has a business relationship or partnership with the Bitmain Companies.
Use of "Bitmain Korea" is also likely to dilute the distinctiveness and/or reputation of the BITMAIN Mark contrary to Articles 2(i)(b) and (c) of the UCPA. In particular, the act of selling a "Baikal Giant-B", a crypto currency miner of a third-party unrelated to the Bitmain Companies through the Website, will clearly cause consumer confusion and dilution.
The Respondent used a privacy service to hide his identity when he registered the Domain Name.
The domain name was registered and is being used in bad faith.
The Domain Name is identical to the BITMAIN Mark, which is widely recognized worldwide, including in the Republic of Korea, as belonging to the Bitmain Companies.
As the BITMAIN Mark is a coined word that was created by the Bitmain Companies and is their internationally recognized source identifier, it is difficult to believe that the Respondent, who appears to be an expert in the cryptocurrency field and is thus in the same industry as the Complainant, was unaware of the Bitmain Companies when he registered the Domain Name. In particular, as at November 1, 2017 (when the Domain Name was registered), the Bitmain Companies already enjoyed a considerable reputation around the world, being described as the "World's Biggest Bitcoin Company" by the Korean media. The BITMAIN Mark was also widely known by that time as the source identifier of the Complaint among Korean consumers. It is obvious that the Respondent registered the Domain Name with the bad faith intention of free riding on the reputation of the BITMAIN Mark and/or confusing consumers.
Given that the major part of the Domain Name is made up of the BITMAIN Mark and the country name "Korea", it is highly likely that consumers are being misled into believing that the Website is operated by the Bitmain Companies for the purposes of marketing to the Korean market.
The Website also contains photos of the office of "Bitmain Korea Inc." which shows the name "Bitmain Korea" clearly displayed throughout the premises.
Given the well-known status of the Bitmain Mark in the Republic of Korea, the act of using the Domain Name in connection with the business of "Bitmain Korea Inc." is highly likely to cause Korean Internet users searching for a local website of the Bitmain Companies, to be diverted to the Website and mislead into believing that "Bitmain Korea Inc." is the Korean branch of, or has a close business relationship with, the Bitmain Companies.
It is obvious that the Respondent was aware of the BITMAIN Mark and that he registered and is using the Domain Name to free-ride on its fame and gain unjust profits therefrom.
That the Domain Name was registered in bad faith is further supported by the fact that the Respondent used a private registration service, and also that he registered it as a Colombian domain name even though based in Thailand and even though "Bitmain Korea Inc." is a business operating in the Republic of Korea and targeting Korean consumers.
The Respondent's act of registering and using the Domain Name is highly likely to have a negative impact on the business and reputation of the Bitmain Companies. The BITMAIN Mark was already widely known in the Republic of Korea before registration of the Domain Name and the Complainant has been actively engaged in developing the Korean market by entering into agreements with Korean companies for the importation and sales of miners. The Respondent's registration and use of the Domain Name is diverting potential consumers of the Bitmain Companies to a competitor's website which will negatively impact the Complainant's business in Korea and is highly likely to damage the distinctiveness and goodwill of the BITMAIN Mark. Respondent
The Respondent did not reply to the Complainant's contentions. As mentioned earlier however, the Respondent did send an email to the Center on July 7, 2017 as follows:
"The domain in question is not operated by myself , same for .. my name and (fake) details are being used without my knowledge or consent.
I am a corporate developer and I create technical concepts and websites for clients..
It is outside our scope to check or verify a clients authorization to use a name or refer to a brand.
I am forwarding your complaint to the customer and will respond shortly
In the meantime I will suspend services for the domain pending a resolution of this dispute
Kind regards
Stefan Nagies." 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in its own trademark, namely the BITMAIN Mark.
Ignoring the country code Top-Level Domain ".co" (as the Panel may do for comparison purposes), the Domain Name comprises the BITMAIN Mark, followed by the geographic indicator "Korea". As the BITMAIN Mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between trademark and domain name.
The BITMAIN Mark is clearly recognizable within the Domain Name. It is a well-known mark and the first and dominant element of the Domain Name. The only issue therefore is whether the addition of "Korea", renders the Domain Name something other than confusingly similar to the Complainant's BITMAIN Mark. In the Panel's view it does not and hence the Panel finds that the Domain Name is confusingly similar to the BITMAIN Mark for the purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent's only communication is his email of July 7, 2018, referred to earlier, but that far from demonstrates rights or legitimate interests. The Panel is therefore entitled to find that the Respondent lacks rights or legitimate interests in the Domain Name. Nevertheless, it is appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. A non-exhaustive list of circumstances demonstrating rights or legitimate interests can be found in paragraph 4(c) of the Policy. Thus, for instance, a respondent might show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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.
Here, however, the Respondent is not known by the Domain Name.
Moreover, the Complainant asserts that the Website promotes the services and products of "Bitmain Korea Inc." which was not known by the Domain Name at the time of registration (of the Domain Name) on November 1, 2017, "Bitmain Korea Inc." being established on December 19, 2017. However, it appears from the relevant annex to the Complaint, that the name of the company appearing on the Website is "Bitmain Korea Co. Ltd" rather than "Bitmain Korea Inc.". The relationship between "Bitmain Korea Inc." and "Bitmain Korea Co. Ltd", and whether the latter was also established in December 2017 or at some other time, matters not. Neither entity are the Respondent and nothing has been said by the Respondent on their behalf.
What is clear however, is that whichever entity owns or controls the Website, it is a site promoting the services and products of others e.g., a "Baikal Giant-B" cryptocurrency miner, a third party product unrelated to the Bitmain Companies. In these circumstances, the Panel would not accept that there is legitimate non-commercial or fair use. In any event, any non-commercial or fair use must be without intent to mislead but, in the absence of any alternative explanation, it is perfectly possible to infer that the very purpose of the (confusingly similar) Domain Name was to deliberately create a false impression of association with the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a website which takes advantage of the fame of a trademark to which it is confusingly similar and which sells competing products to those offered by the trademark owner, could amount to a bona fide offering.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a formal Response and his email of July 7, 2018, does not assist in this regard. The prima facie case that the Respondent has no rights or legitimate interests in the Domain Name have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The assertions of the Complainant i.e., that the Respondent is the CEO of a company which appears to have been involved in bitcoin mining and is also MD of another which focuses on "FinTech Solutions and Blockchain Application including but not limited to Cryptocurrencies", have not been challenged. This is despite such assertions perhaps running counter to the Respondent's email of July 7, 2018, in which he refers to himself as "…a corporate developer…" creating "…technical concepts and websites for clients..". It is accepted, therefore, that the Respondent is active in the specialized field of cryptocurrency in which the Complainant is also active. In these circumstances, the Respondent is likely to have been aware of the Bitmain Companies and the BITMAIN Mark at the time of registration of the Domain Name.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. But this describes just one way in which bad faith registration and use can be demonstrated from a non-exhaustive list of examples set out in paragraph 4(b) of the Policy. The website to which Internet users might be attracted as a result of confusion need not be the website of the respondent in circumstances where the respondent has allowed its domain name to be used in a manner which has created such confusion or likelihood thereof. Thus, whatever the relationship of the Respondent to Bitmain Korea Inc./ "Bitmain Korea Co. Ltd" and the Website, in all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: August 23, 2018
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