WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bybit Fintech Limited v. Liqian (李黔)
Case No. D2021-3559
1. The Parties
The Complainant is Bybit Fintech Limited, Seychelles, represented by Norton Rose Fulbright Hong Kong, Hong Kong, China.
The Respondent is Liqian (李黔), China.1
2. The Domain Name and Registrar
The disputed domain name <bybt.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 3, 2021. The Complainant also made a further filing on November 9, 2021, and submitted a correction of that filing on November 10, 2021.
The Center verified that the Complaint together with the amendment to the 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 November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent sent email communications to the Center on November 10 and 11, 2021 in which he requested the use of Chinese in this proceeding. On November 15, 2021, the Respondent sent email communications to the Center and the Registrar, respectively, in which he provided an acceptance notice issued by the Intermediate People’s Court of Changsha City of Hunan Province, China, and submitted that the Center was required to reject the Complaint and the Registrar was required to keep the disputed domain name on lock status until it received the Court’s judgement. The Response was filed with the Center on November 28, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 16, 2021. 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 Complainant was established in March 2018 and operates a cryptocurrency exchange. At the time of filing the Complaint, its website claimed that it had more than two million registered users. It also offers a mobile application or app known as “Bybit”. On June 24, 2021, the Complainant filed Hong Kong, China trademark applications numbers 305667229, 305667238, and 305667247 for two BYBIT logos and a BYBIT wordmark, respectively, each specifying goods and services in classes 9, 35, 36, 41, and 42. Those trademark applications were published for acceptance for registration on August 13, 2021, prior to the filing of the Complaint. They were not registered until November 30, 2021, after the filing of the Complaint, the Complainant’s further filing, and the Response.2 The Complainant has also registered the domain name <bybit.com> that it uses in connection with a website where it provides information about itself and its cryptocurrency exchange.
A company named Shanghai Yun’an Information Technology Co. Ltd. (上海云桉信息科技有限公司) owns Chinese trademark registrations numbers 38353102, 38368695, 38377138, 38362398, 38362408, and 38370273, all for BYBIT, and each specifying services in class 35 or 36. These trademarks were registered between January 14, 2020 and February 7, 2020.
The disputed domain name was created on June 19, 2004. The Registrar indicated in its Verification Response that the Respondent transferred the disputed domain name into its system on January 7, 2020, and the Registrar did not know if the Respondent was the registrant of the disputed domain name prior to that date.
The Respondent operates a cryptocurrency futures trading and information platform that was known as “Bybt” at the time when the Complaint was filed. The platform operates via the website associated with the disputed domain name and an app. According to web analytics provided by the Respondent, Alexa ranked the website 7,611th in global Internet traffic and engagement in a 90 day period, while Similarweb has calculated a total of 3.45 million visitors to the website. The website presents data for different cryptocurrency exchanges, including the Complainant’s exchange, each of which is indicated by its respective logo. Internet users who click on the Complainant’s BYBIT logo are shown a page on the website displaying charts regarding the Complainant’s cryptocurrency futures data. The website displays banner advertisements for different cryptocurrency exchanges, including the Complainant’s, which promote special offers and link to the websites of the relevant exchanges. At the time of this Decision, the disputed domain name now redirects to <coinglass.com>, which resolves to the same website, now rebranded as “coinglass”. The Respondent’s app has now also been rebranded as “coinglass”.
According to evidence provided by the Respondent, the Complainant’s business development manager contacted the Respondent on November 27, 2020 via email proposing cooperation, according to which the Respondent would bring in traders to the Complainant’s exchange in return for a profit share and customer support. The evidence shows that on March 8, 2021, the Complainant sent a copy of one of its BYBIT logos to the Respondent, asking the Respondent to try it, evidently in a banner advertisement, and offering the Respondent a discount on the Complainant’s trading fees. On October 20, 2021, the Complainant asked the Respondent to change the banner advertisement, sending a link to a page on its own website with details of a new promotion and asking the Respondent to design a new advertisement.
On July 19, 2021, the Parties discussed their respective app icons. The Respondent informed the Complainant that the Complainant’s BYBIT icon would lead the public to misunderstand that the Respondent had become a sub-brand of the Complainant. The Complainant replied that it had found the Respondent’s bybt icon design posh therefore the Complainant had changed that icon to all uppercase with the letter “i” highlighted to make the Complainant’s BYBIT icon. The evidence does not show that the Respondent agreed to these changes.
The disputed domain name was offered for sale on a domain name registrar’s website for a minimum price of HKD 19,470.40 as recently as September 24, 2021.
On September 26, 2021, the Complainant’s chief executive officer and another employee contacted the Respondent to propose an investment in the Respondent’s business. The Parties discussed the proposal but, on November 1, 2021, the Respondent finally declined to accept financing or to sell, citing the differences between the Parties’ respective valuations of the Respondent’s “Bybt” platform.
5. Parties’ Contentions
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant acquired rights in the BYBIT marks in 2018 before the actual operation of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not granted any authorization or consent for the Respondent to redirect to the Complainant’s official website. The Respondent’s operation and use of the disputed domain name is free riding on the Complainant’s reputation, the Respondent’s website also redirects to the websites of the Complainant’s competitors, and is not a legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. The Respondent has registered the disputed domain name primarily for the purpose of selling it to any parties, including the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Respondent intentionally included promotional banners for Bybit and redirects Internet users to the Complainant’s official website. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complaint contains statements that are not factual regarding the display of promotional banners for BYBIT on the Respondent’s website. It was the Complainant who took the initiative to seek the Respondent’s cooperation. Although the Complainant alleges that the Respondent did not have its consent to display a banner advertisement on the Respondent’s website, the Complainant actively invited his cooperation. The Complainant has distorted the facts in bad faith.
The Respondent has legal rights within the scope of his operations. The Respondent provides analytical data to a wide range of customers, whereas the Complainant operates a cryptocurrency exchange and provides an online trading platform, which are different types of services.
The Respondent has millions of professional users of its website around the world and a strong brand and he does not need to use the disputed domain name to discredit the Complainant. The Respondent does not rely on third parties to attract traffic to his site. The Respondent has never sold the disputed domain name; it was offered for sale on another website without any involvement of the Respondent. In any case, the asking price of HKD 19,470 was far below the value of a domain name with millions of users.
The disputed domain name <bybt.com> and the Complainant’s domain name <bybit.com> are unrelated. Four-letter domain names are a scarce resource. The disputed domain name is a random collection of letters with no meaning. The Complainant has no exclusive rights to “bybt”; anyone has the right to use it.
The Respondent’s “bybt” application icon does not infringe the Complainant’s rights. The icon was designed as early as July 8, 2020 and has been in constant use since that time. This predates the latest version of the Complainant’s logo, which was only launched on July 15, 2021, and it also predates acceptance of the Complainant’s Hong Kong, China trademark applications on August 13, 2021. In any case, the Complainant had no trademark rights at the time of changing its logo design. It was the Complainant that changed its logo to resemble the Respondent’s app icon.
The Complainant is seeking to acquire the disputed domain name through reverse domain name hijacking. The Complainant approached the Respondent to discuss cooperation and financing while secretly filing trademark applications and the Complaint. If the Complainant believes that the Respondent is infringing its rights, then the Respondent asks why it invited cooperation. The Complainant wants to acquire the disputed domain name for free.
6. Discussion and Findings
6.1 Preliminary Issues
A. Language of this Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in English.
The Respondent requests that the Center and the Complainant communicate in Chinese. His main arguments are that he is Chinese and that he does not understand English.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint and the amendment to the Complaint in this proceeding were filed in English and the Response was filed mostly in Chinese. The Registration Agreement is in English and the Respondent’s website is in English, all of which demonstrates that the Respondent understands English. The Parties corresponded prior to this proceeding mostly in Chinese and the Complainant’s website has a Chinese version, which demonstrates that the Complainant is able to communicate in Chinese. Both Parties have taken the opportunity to present their respective views of the matter in dispute and the Panel is familiar with both English and Chinese. Therefore, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, whereas accepting the original version of each submission will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that it will accept both Parties’ submissions as filed in English or Chinese, without translation.
B. Complainant’s Further Filing
On November 9, 2021, before the formal commencement of the proceeding on later the same day, the Complainant made a further filing. This filing contains information regarding Chinese trademark registrations. The Complainant submitted a correction to that filing on the following day. The Respondent has not objected to the Complainant’s correction of November 10, 2021, and the Panel observes that the admission of this correction does not cause any prejudice to the Respondent, for the reasons given in Section 6.2.A below.
Therefore, in accordance with paragraph 10(d) of the Rules and in the interests of ruling on the basis of the fullest record possible, the Panel will admit the Complainant’s correction of November 10, 2021, and take it into consideration according to its relevance, materiality, and weight.
C. Other Legal Proceedings
The Respondent submits an acceptance notice issued in 2021 by the Intermediate People’s Court of Changsha City of Hunan Province, China.3 The notice indicates that a case between the Parties concerning domain name infringement has been reviewed and found to meet the requirements for acceptance by the Court. However, by its own terms, this notice does not evidence the initiation of a legal proceeding nor does it attach a receipt for the prepaid litigation costs, as required for its validity.
Therefore, the Panel sees no evidence on the record of any legal proceedings that have been formally commenced or terminated in connection with or relating to the disputed domain name. The Panel will proceed to assess the merits of this dispute.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element of paragraph 4(a) of the Policy requires that the Complainant demonstrate that it has rights in a trademark or service mark. This requirement is assessed as at the time when the Complaint was filed. See WIPO Overview 3.0, section 1.1.3.
The Complainant did not hold any relevant trademark registrations at the time when the Complaint was filed. At that time, its trademark applications in Hong Kong, China had been accepted and published but were still pending registration. A pending trademark application, by itself, does not confer any trademark rights for the purposes of the standing requirement in paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.1.4.
The Complaint implies a claim to unregistered trademark rights insofar as it alleges that the Complainant acquired rights at the time of its establishment in 2018. However, the Complainant provides no evidence of its establishment nor of the use of its trademarks besides a copy of the “About Us” section on its own website and a banner advertisement recently displayed on the Respondent’s website. This evidence does not demonstrate that any BYBIT mark has become a distinctive identifier that consumers associate with the Complainant’s goods or services and it is therefore inadequate to establish unregistered trademark rights. See WIPO Overview 3.0, section 1.3.
The Complainant’s further filing provides details of six Chinese trademark registrations for BYBIT, each registered between January 14, 2020 and February 7, 2020, prior to the time when the Complaint was filed. These trademark registrations are held by a third party named Shanghai Yun’an Information Technology Co. Ltd. which the Complainant asserts is a related entity.
The Panel will accept arguendo that the Complainant has rights in the BYBIT marks by virtue of its asserted relationship to Shanghai Yun’an Information Technology Co. Ltd., the registered proprietor of the above Chinese trademark registrations, for the purposes of the standing requirement in the first element of paragraph 4(a) of the Policy, which enables the Panel to address the merits of the case below.
The Panel observes that the disputed domain name incorporates the BYBIT mark, omitting only the letter “i”. The disputed domain name and the mark are visually and aurally almost identical. The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element may be disregarded in the comparison between the disputed domain name and the BYBIT trademark. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Given the Panel’s conclusion in Section 6.2.C below, it is unnecessary to make any findings regarding the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or acquisition and use of the disputed domain name in bad faith. The first and fourth circumstances are as follows:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; and
(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
As regards registration or acquisition, the Complainant must demonstrate that it is more likely than not that the Respondent was aware of the Complainant or one of its marks at the time when he acquired the disputed domain name and that intended to benefit unfairly from that mark and/or to damage the business of the Complainant. See Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580.
In the present case, the Respondent acquired the disputed domain name no later than January 7, 2020, before the earliest registration date of any BYBIT mark, which was January 14, 2020. The Panel recalls that, where a respondent registers a domain name before the complainant’s trademark rights accrue (as in the present case), panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1.
There is an exception to the above general proposition in certain limited circumstances where the facts of a case establish that a respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2. However, the circumstances of this case do not fall within that exception. While the applications that led to the Chinese trademark registrations for BYBIT were filed on May 22, 2019 and may have been pending at the time when the Respondent acquired the disputed domain name, the Complainant provides no information regarding the trademark applicant, Shanghai Yun’an Information Technology Co. Ltd., its business or its alleged relationship to the Complainant. Consequently, there is no basis on which to find that the Respondent could or should have been aware of nascent trademark rights in BYBIT.
As regards use, the Complainant provides evidence showing that the disputed domain name was offered for sale on a domain name registrar’s website for the price of HKD 19,470.40 (approximately USD 2,500) prior to the Respondent’s recent rebranding. The Panel rejects as improbable the Respondent’s submission that he had no involvement in authorizing that offering for sale. However, the Panel notes that the disputed domain name is used in connection with a cryptocurrency futures trading and information platform that has attracted millions of visitors (and to which it now redirects via another domain name). The platform operates via a website and an app, and appears both to be the product of a considerable investment of resources and to provide information of value to traders. In these circumstances, the Panel considers it improbable that the Respondent acquired the disputed domain name “primarily” for the purpose of selling it within the terms of paragraph 4(b)(i) of the Policy.
The Complainant points out that the website associated with the disputed domain name has displayed a banner advertisement for the Complainant with a link to the Complainant’s website. It submits that “[t]he Respondent has no connection or affiliation with the Complainant and the Complainant has not granted any authorization or consent for the Respondent to redirect to the Complainant’s official website”. However, the evidence on record demonstrates that the Complainant itself asked the Respondent to display banner advertisements over a period of months, and provided a logo and a hyperlink to its own website for this purpose. In these circumstances, it was accurate for the Respondent’s website to give the impression that it was sponsored or endorsed by, or affiliated with, the Complainant. The record does not disclose whether the latest version of the advertisement was authorized or whether the Complainant withdrew its prior authorization but, having failed to acknowledge that it requested and facilitated advertising on the Respondent’s website in the first place, the Complainant is unable to establish a prima facie case that the Respondent is no longer so authorized. Accordingly, the Complainant has failed to establish that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel does not find that the disputed domain name has been registered in bad faith nor does it find that the disputed domain name is being used in bad faith. The Complainant has failed to satisfy either requirement in the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent submits that the Complainant is seeking to acquire the disputed domain name through Reverse Domain Name Hijacking.
The Panel notes that the Complainant has legal representation in this proceeding and that the Complaint contains two serious defects. First, the Complaint was doomed to fail because it did not demonstrate any trademark rights, which is the requirement for standing under the Policy. Although the Complainant sought to remedy this defect with a further filing by reference to certain Chinese trademark registrations, it merely asserted that the registered proprietor of those trademarks was a related entity, without substantiation. Second, the Complaint includes the following false or misleading statement regarding a material particular:
“[t[he Respondent has no connection or affiliation with the Complainant and the Complainant has not granted any authorization or consent for the Respondent to redirect to the Complainant’s official website.”
In fact, the record shows that the Complainant approached the Respondent and requested that he display banner advertising on his website. The Complainant not only authorized and consented for the Respondent to redirect to the Complainant’s official website, but it provided its logo and a hyperlink to enable the Respondent to do so.
Further, the Panel notes that the Complainant filed the Complaint one month after proposing to invest in the Respondent’s business and days before the Respondent gave its final answer declining the offer. The record indicates that the Complainant resorted to the Policy as “Plan B” in case it failed to gain control over the disputed domain name in the marketplace or to increase its bargaining leverage. Either is a highly improper purpose for a complaint under the Policy and constitutes a further basis to find Reverse Domain Name Hijacking. See BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.
Therefore, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: December 30, 2021
1 The original Complaint was filed against a privacy service. The amendment to the Complaint added the Registrar-verified underlying registrant, which the Panel considers to be the appropriate Respondent.
2 Pursuant to the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, the Panel has conducted an online search of the Hong Kong, China trademark database at “https://esearch.ipd.gov.hk/”, which is a matter of public record, as it considers the registration status and dates of the Complainant’s mark useful in assessing the case merits and reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.
3 (2021) 湘 01 民初 1881号。