Bitmain: JPN.com subdomain lost via the #UDRP process

JPN.com is a domain that belongs to the CentralNic network, offering what’s essentially third level domains (subdomains) at around $65 dollars a pop.

Bitmain.JPN.com ended up in a UDRP, after Bitmain Technologies Limited  filed a dispute at the Forum (formerly NAF.)

Apparently, such domains require a mediation to have completed with CentralNic Mediation prior to filing the UDRP.

Long story short: the (sub)domain Bitmain.JPN.com was granted transfer to the Complainant.

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

Claim Number: FA2108001958604

PARTIES

Complainant is Bitmain Technologies Limited (“Complainant”), represented by HE Wei of Han Kun (Shenzhen) Law Offices, International. Respondent is Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf (“Respondent”), International.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on June 16, 2021. See Compl. Ex. 18.

Complainant submitted a Complaint to the Forum electronically on August 9, 2021; the Forum received payment on August 9, 2021.

On August 10, 2021, NameCheap, Inc. confirmed by e-mail message addressed to the Forum that the <bitmain.jpn.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 with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).

On August 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to the attention of postmaster@bitmain.jpn.com. Also on August 16, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.

On September 13, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the 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 and its affiliated companies are leading global technology companies, offering such products as chips, servers and cloud solutions, mainly for use in the realms of blockchain (especially for bitcoin and mining machines) and artificial intelligence.

Complainant holds a registration for the BITMAIN mark, which is on file with the Intellectual Property Office of Singapore (“IPOS”) as Registry No. 40201504948W, registered March 24, 2015.

Respondent registered the domain name <bitmain.jpn.com> on or about April 15, 2021.

The domain name is confusingly similar to Complainant’s BITMAIN mark.

There is no relationship between Complainant and Respondent.

Respondent is not licensed or otherwise authorized to use Complainant’s BITMAIN mark.

Respondent lacks both rights to and legitimate interests in the domain name.

Respondent registered the domain name with knowledge of Complainant’s mark.

The domain name is currently inactive.

Respondent both registered and now uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

 

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

 

(3) the same domain name was registered and is being used by Respondent in bad faith.

DISCUSSION

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:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered or is being used by Respondent in bad faith.

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that such mediation must have been terminated prior to consideration of the Complaint.

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 the absence of a response, the Panel is entitled to accept all reasonable allegations set out in a complaint. Therefore, in view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, decide this administrative proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. 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 has rights in the BITMAIN trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the IPOS. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here Singapore) other than that in which Respondent resides or does business (here, apparently, Iceland). See, for example, Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017):

Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bitmain.jpn.com> domain name is confusingly similar to Complainant’s BITMAIN trademark. The domain name incorporates the mark in its entirety, with only the addition of the three-letter combination “.jpn,” a common abbreviation for “Japan” and a common substitute for the country code Top Level Domain (“ccTLD”) “.jp,” plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017) (finding the domain name <danskoshoes.us.com> to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD).

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

This is because every domain name requires a gTLD or other TLD.

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <bitmain.jpn.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

We begin by noting that Complainant contends, and Respondent does not deny, that there is no relationship between Complainant and Respondent, and that Complainant has not licensed or otherwise authorized Respondent to use the BITMAIN trademark. We also take cognizance of the fact that nothing in the record before us indicates that Respondent has become commonly known by the <bitmain.jpn.com> domain name in the five short months of its existence. And, consistent with this, the pertinent WHOIS information redacts Respondent’s identity. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015):

The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.

We next observe that Complainant contends, without objection from Respondent, that the <bitmain.jpn.com> domain name does not resolve to an active website, so that it is being passively held by Respondent. In the circumstances described in the Complaint, this employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.

See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):

[B]oth Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).

The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy ¶ 4(a)(ii).

Registration or Use in Bad Faith

We are persuaded by the evidence that Respondent knew of Complainant and its rights in the BITMAIN mark when it registered the <bitmain.jpn.com> domain name. This stands as proof of Respondent’s bad faith in registering the domain name. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):

The Panel here finds that Respondent did have actual knowledge of Complainant’s mark [when it registered a confusingly similar domain name], [thus] demonstrating bad faith registration and use [of the domain name] under Policy ¶ 4(a)(iii).

Under the terms of the CentralNic Policy, this is all that is required to support a finding of bad faith sufficient, in company with parallel findings under Policy ¶’s 4(a)(i) and (ii), to warrant a decision transferring the challenged domain name from Respondent to Complainant. However, we also find that the circumstances laid out in the Complaint compel the conclusion that Respondent’s passive holding of the <bitmain.jpn.com> domain name is evidence of bad faith use of it when considered in light of Respondent’s efforts to conceal its identity in registering the domain name as well as that it is difficult to imagine any legitimate use to which Respondent might put the domain name should it ever be actively employed. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000):

[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith [including the two just mentioned].

See also State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum September 10, 2018) (finding bad faith use of a contested domain name under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”).

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

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

Terry F. Peppard, Panelist

Dated: September 15, 2021

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