Zuykov and partners won a domain name case in WIPO
The Administrative Commission of the World Intellectual Property Organization (WIPO) Center for Arbitration and Mediation considered the complaint of the foreign company Bitmain Technologies Limited (Hong Kong) about the illegal use of the Bitmain trademarks in the domain name "www.bitmain-russia.com" in the framework of case No. D2023-2248.
The applicant is a manufacturer of digital currency mining servers under its ANTMINER and BITMAIN brands, serving customers in over 100 countries. The company started its activity in 2013.
The interests of the foreign company Bitmain Technologies Limited were represented by Zuykov and partners. The defendant in this case is the administrator of the disputed domain name - Hay Ruslan, Russian Federation.
In accordance with the Uniform Domain Name Dispute Resolution Policy, the Uniform Domain Name Dispute Resolution Rules and the WIPO Supplemental Domain Name Dispute Resolution Rules for Client Protection, lawyers prepared and submitted a complaint to the WIPO Arbitration and Mediation Center.
The complaint was based on the following grounds:
1. The domain name is confusingly similar to the client's trademark
The applicant is the owner of the trademark "BITMAIN" according to the certificate of the Russian Federation No. 749564, registered in relation to part of the services of classes 35 and 36 of the Nice Classification. The disputed domain name is confusingly similar to the trademark of the applicant according to the certificate of the Russian Federation No. 749564 in terms of phonetic, semantic and semantic criteria due to the complete coincidence of the “BITMAIN” part in the initial part of the disputed domain name and the trademark.
2. Respondent has no right or legitimate interest in the domain name
At the time of registration of the disputed domain name, the applicant's trademark had already been well known to the Russian-speaking population for two years. The Respondent knew about the Applicant's trademark and intended to exploit the reputation and popularity of the Applicant's trademark among Russian-speaking consumers, as evidenced by the information on the website "www.bitmain-russia.com". At the same time, the applicant also did not give any consent to the use of his trademark by posting it on the website and using it in the domain name.
The defendant, using the disputed domain name, attempted to distract consumers from the applicant's website, www.bitmain.com, by using a confusingly similar domain name and presenting similar content. These actions are regarded as deliberate misleading of the consumer in order to obtain commercial benefits and unreasonable advantages.
3. The domain name has been registered and is being used in bad faith
The applicant's domain name and the applicant's trademarks were registered before the disputed domain name was registered. At the same time, on the www.bitmain-russia.com website, the defendant identifies himself as the official supplier of Bitmain Russia, providing information about the applicant's company. Thus, the defendant uses the disputed domain name as a competing website in the same field (blockchain) with the complainant, which increases the likelihood of confusion and misleading consumers. Documents confirming the existence of partnerships, including dealerships, were not provided by the defendant.
Based on the data presented, the Administrative Panel considered that all three of the above elements of the Uniform Domain Name Dispute Resolution Policy were established and proven by the applicant.
On August 2, 2023, by decision of the Administrative Group of the Administrative Commission of the WIPO Arbitration and Mediation Center, the foreign company's claim to transfer the disputed domain name "www.bitmain-russia.com" was satisfied. Thus, the interests of the client in terms of transferring the disputed domain name under its administration were fully protected.