BullionBank.com: Complainant failed to upgrade domain name via the UDRP process

US based Bullion and Diamond Co LLC filed a UDRP to get the domain BullionBank.com after declining to pay six figures for it. They use the domain TheBullionBank.com.

The Complainant holds trademarks for THE BULLION BANK, claiming first use in 2011; the disputed domain was registered in 2017.

The Respondent is the founder, chairman, and former CEO of BullionStar Pte. Ltd., a Singapore-based company engaged in the sale, purchase, and storage of bullion and other precious metals. They declined any knowledge of the Complainant and their mark in Singapore.

In private communications initiated by an associate of the Complainant’s, references to an expected six figure offer were made by the Respondent. Further down the road, they declined such an option and wished the Complainant good luck with finding an alternate domain.

The Forum panelists referred to six points about the Complainant’s process to inquire about buying the domain:

“First, the full circumstances of the email exchange are unknown, including the nature of the Complainant’s offers. Second, the emails were not sent by the Respondent personally but by the CTO of a company linked to the Respondent. Third, the “6 figure” comment appears to describe a hypothetical threshold for board discussion. Fourth, the exchange seems to have been initiated by the Complainant rather than the Respondent. Fifth, the initial and final positions expressed by the CTO were that Bullion Star intended to retain the domain. Sixth, the emails do not establish whether the Complainant’s identity was disclosed or whether the “6 figure offer” was targeted at the Complainant or its trademarks.”

Final decision: Deny the transfer of the domain name BullionBank.com to the Complainant.

Bullion and Diamond Co LLC v. Dan Torgny Persson

Claim Number: FA2504002148846

PARTIES

The Complainant is Bullion and Diamond Co LLC (“Complainant”), represented by Benjamin E. Maskell of Maskell Law PLLC, Virginia, USA. The Respondent is Dan Torgny Persson (“Respondent”), Singapore.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is bullionbank.com, registered with GoDaddy.com, LLC.

PANEL

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

Jonathan Agmon and Dennis A. Foster as Panelists and Bart Van Besien as Chair.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to Forum electronically on April 4, 2025; Forum received payment on April 4, 2025.

On April 7, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the bullionbank.com domain name is registered with GoDaddy.com, LLC and that the Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that the Respondent is bound by the GoDaddy.com, LLC 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 April 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2025, by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bullionbank.com. Also on April 10, 2025, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on April 29, 2025.

On May 7, 2025, pursuant to the Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Jonathan Agmon and Dennis A. Foster as Panelists and Bart Van Besien as Chair.

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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is a company engaged in the sale of gold bullion and related products and services. It asserts that it has been using the name “THE BULLION BANK” since at least 2011.

The Complainant owns two registered U.S. trademarks (hereafter collectively referred to as the “Complainant Trademarks”):

· “THE BULLION BANK”: U.S. word trademark Reg. No. 4,595,162, for services in class 35 (“on-line retail store services featuring bullion and coins of precious metals; retail store services featuring bullion and coins of precious metals”), registered on September 2, 2014 (with claimed first use since November 2011);

· “THE BULLION BANK”: U.S. word trademark Reg. No. 4,595,163, for services in class 36 (“providing monetary exchange services, namely, exchanging gold of retail customers for cash”), registered on September 2, 2014 (with claimed first use since November 2011).

The Complainant contends that the disputed domain name is confusingly similar to the Complainant Trademarks, differing only by the omission of the word “the” and the addition of the generic top-level domain (“.com”).

The Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain name. It emphasizes that the domain resolves to an error page and has remained unused for over seven years. Moreover, any use of the domain, according to the Complainant, would infringe upon its trademark rights. The Respondent is not commonly known by the name “THE BULLION BANK” or any similar name and has not been authorized or licensed to use the Complainant Trademarks.

The Complainant also asserts that the domain was registered and is being used in bad faith. It alleges that the Respondent is a direct competitor and registered the domain to disrupt the Complainant’s business. Furthermore, the Respondent took steps to conceal its identity by using a Whois privacy service. Lastly, the Complainant claims that the Respondent attempted to sell the domain at an extortionate price, seeking a six-figure offer.

B. Respondent

The Respondent is the founder, chairman, and former CEO of BullionStar Pte. Ltd., a Singapore-based company engaged in the sale, purchase, and storage of bullion and other precious metals.

The Respondent asserts that the Complainant Trademarks consist of generic or descriptive terms and are not well-known outside the United States or in the broader marketplace. The Respondent maintains that it had no prior knowledge of the Complainant or its trademarks before this dispute arose.

The Respondent argues that the disputed domain name is not confusingly similar to the Complainant Trademarks. Both the domain and the trademarks consist of common dictionary terms (“bullion” and “bank”), and the combination “bullionbank” is a generic or descriptive term in English that typically refers to a financial entity dealing in bullion. As such, the Complainant Trademarks lack distinctiveness.

The Respondent contends that it holds rights and legitimate interests in the disputed domain. It states that concrete preparations were made to use the domain, including plans dating back to 2013 to brand part of its business as “Bullion Bank.” The delay in active use is attributed to business planning and external factors, including regulatory restrictions on the use of the term “bank.” The Respondent notes that non-use of a domain name does not, in itself, establish a lack of rights or legitimate interests.

The Respondent further asserts that the domain name was neither registered nor used in bad faith. While acknowledging that both parties operate in the bullion market, the Respondent denies any intention to target or disrupt the Complainant’s business. The Respondent was unaware of the Complainant at the time of registration. The Complainant operates primarily in the United States and Canada, while the Respondent is focused on the Asia-Pacific region. The domain name consists of generic terms, and passive holding alone does not constitute bad faith. The use of a Whois privacy service is a standard practice offered by registrars to protect personal information. There is no evidence of a pattern of abusive domain registrations, and this case does not reflect clear cybersquatting. Finally, regarding the alleged offer to sell the domain, the Respondent claims the price was hypothetical, not solicited, and that the domain was never listed for sale on a public marketplace.

FINDINGS

The domain name was created on September 9, 2017.

The Complainant is the owner of the Complainant Trademarks, i.e. two U.S. trademarks “THE BULLION BANK”, both registered on September 2, 2014 (with claimed first use since November 2011).

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 the 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.

Identical and/or Confusingly Similar

The disputed domain name wholly incorporates the word elements “BULLION” and “BANK” of the Complainant Trademarks, differing only by the omission of the definite article “THE” and the addition of the generic Top-Level Domain (gTLD) “.com”. Neither the omission of the article nor the inclusion of the gTLD contributes any distinctiveness to the domain name. It is well established that the gTLD may be disregarded when assessing whether a domain name is confusingly similar to a trademark in which the Complainant has rights (see f.e. SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008)).

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant Trademarks within the meaning of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

As the Panel concludes that the Complainant has not satisfied Policy ¶ 4(a)(iii) (see below), the Panel declines to consider Policy ¶ 4(a)(ii). Under the Policy, the Complainant must establish all three elements of ¶ 4(a). Failure to prove any of these elements renders analysis of the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006).

Registration and Use in Bad Faith

The Panel finds that the Complainant has not demonstrated that the Respondent had the Complainant or the Complainant Trademarks in mind at the time of registration and use of the disputed domain name.

The Panel notes that the domain name consists of the terms “bullion” and “bank”, which, when used together, may be seen as descriptive of financial services related to bullion. The Respondent’s use of these descriptive terms in the domain name in connection with (intended) services that may compete with those offered by the Complainant, does not, in itself, establish bad faith. This is particularly so in light of the absence of evidence that the Respondent intentionally targeted the Complainant or sought to disrupt its business.

The Respondent stated that he was unaware of the Complainant or the Complainant Trademarks prior to the commencement of these proceedings, and the Panel sees no evidence to the contrary.

The Panel also considers that the parties appear to operate in geographically distinct regions. The Complainant is based in the United States, with offices in Virginia, and appears to serve primarily a North American clientele. The Respondent, by contrast, is based in Singapore and appears to focus on clients in South Asia.

The Complainant Trademarks are valid in the United States, but not in Singapore or other jurisdictions in which the Respondent conducts its business.

The Complainant has not provided evidence regarding its business reputation, sales figures, advertising, marketing, or revenue in the Respondent’s region. Nor has the Complainant presented other facts supporting a finding that its marks were particularly well known at the time the disputed domain name was registered or used.

As the burden of proof rests with the Complainant, it is incumbent upon the Complainant to provide evidence that the Respondent had the Complainant or the Complainant Trademarks in mind when registering and using the domain name.

As noted in the recent panel decision in Renu Medispa LLC v. Angela Sattler/Aesthetics, FA 2143814 (Forum Apr. 28, 2025) a foundational question under the third element of the Policy is whether the Respondent had actual knowledge of the Complainant or its claimed trademark(s) at the time of the domain name registration.

Regarding the use of a privacy service, the Panel notes that it is not uncommon for registrants to mask their identity for privacy reasons, as the Respondent claims to have done in the present case.

With respect to the alleged offer to sell the disputed domain name, the Panel notes that the Complainant submitted three emails, which formed part of a broader exchange concerning a potential purchase of the domain name.

These emails were sent by the CTO of Bullion Star (a company of which the Respondent is founder, chairman, and former CEO) to the Gmail address of the Complainant’s attorney. However, the Panel has not been provided with the full email correspondence, including the emails sent by the Complainant’s attorney. It is also unclear whether the Respondent himself was aware of or approved the CTO’s communications.

In the first of the submitted emails, Bullion Star’s CTO wrote: “We are interested in keeping the domain since we are in the industry. We are however open for serious offers. Who is the actual buyer?”

Although the Complainant’s attorney’s response is not in the record, it appears that he made an offer to buy the domain. The CTO’s second email replied: “The offer is quite far of what the value is and what we paid for it. I can take a 6 figure offer to the board to hear what they say.”

Again, the attorney’s response is not included, but the CTO’s third email declined the offer and closed the discussion: “Thanks for the offer. We do have a plan for the domain. Good luck in your search of a domain.”

While it is true that the emails sent by Bullion Star’s CTO mentioned “a 6 figure offer”, this statement does not, in the Panel’s view, amount to evidence of bad faith by the Respondent at the time of registration and use of the domain.

First, the full circumstances of the email exchange are unknown, including the nature of the Complainant’s offers. Second, the emails were not sent by the Respondent personally but by the CTO of a company linked to the Respondent. Third, the “6 figure” comment appears to describe a hypothetical threshold for board discussion. Fourth, the exchange seems to have been initiated by the Complainant rather than the Respondent. Fifth, the initial and final positions expressed by the CTO were that Bullion Star intended to retain the domain. Sixth, the emails do not establish whether the Complainant’s identity was disclosed or whether the “6 figure offer” was targeted at the Complainant or its trademarks.

The Panel finds that the Complainant did not provide sufficiently convincing argumentation or evidence that any of the circumstances of paragraph 4(b) of the Policy (or any other circumstances of bad faith at registration and use of the disputed domain name) are present in this case.

Taking the above elements into account, the Panel concludes that the Complainant did not show that the Respondent has registered or used the disputed domain name in bad faith under the third element of paragraph 4(a) of the Policy.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.

Accordingly, it is Ordered that the bullionbank.com domain name REMAIN WITH the Respondent.

Jonathan Agmon, Panelist

Dennis A. Foster, Panelist

Bart Van Besien, Chair

Dated: May 21, 2025

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