Cboe Exchange, Inc. v. vix wallet
Claim Number: FA2004001892441
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, United States. Respondent is vix wallet (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vix-token.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 17, 2020, Google LLC confirmed by e-mail to the Forum that the <vix-token.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vix-token.com. Also on April 22, 2020, 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 May 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
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 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the VIX trademark and service mark acquired through its ownership of the registered trademarks described below and submits that it has acquired common law rights in the mark though its use trading in securities and derivatives across a diverse range of products in multiple asset classes and jurisdictions, including options, futures, U.S. and European equities, exchange-traded products, and global foreign exchange since 1993.
Complainant submits that the disputed domain name <vix-token.com> is confusingly similar to Complainant’s VIX mark, because it incorporates Complainant’s trademark in its entirety, merely adding a hyphen and the generic cryptocurrency-related term “token.” Complainant submits that these additional elements do not eliminate the confusing similarity with Complainant’s registered trademarks. Regions Bank v. Luis Ruiz, FA1805001786410 (Forum June 15, 2018) (finding respondent’s addition of the generic term “token” to complainant’s mark REGIONS insufficient to “distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.”).
Complainant adds that the generic top-level domain (“gTLD”) suffix <.com> does not create a meaningful distinction from Complainant’s mark as it is well established under the Policy that “the specific top level of a domain name . . . does not affect the determination of the identity or similarity between a domain name and a trade mark.” Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (The top-level domain “does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and, referring to exhibits annexed to the Complaint, submits that a business entity search it had carried out, with the California Secretary of State department showed no results for “vix wallet” as a registered entity; and a Google search against the same terms, produced only 200 results none of which showed an existing individual or entity under that name. See Tercent Inc. v. Lee Yi, FA0139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant further alleges that Respondent is not using the disputed domain name to make a bona fide offering of goods or services, or for any non-commercial or fair use.
Referring to a print-out of the website to which the disputed domain name resolves which is submitted as an annexed to the Complaint, Complainant adds that the website is riddled with dubious content throughout and is purportedly promoting competing critical related services by creating a likelihood of confusion with Complainant’s trademark. At first blush it appears to be a developed active website. Closer review however shows that virtually every link on the webpage resolves to the masthead rather than any other content. There are typographical errors such as in the section labelled “News”, which appears to provide links to crypto conferences, there are the misspellings “New Youk, United State” and “California United State”. There also six icons for social media accounts on the website, none of which directs users to any social media. Furthermore, the website deteriorates to placeholder Lorem Ipsum text throughout.
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant submits that Respondent registered the disputed domain name using false information, and providing false, address in the non-existent city of “Locoon CA”. Amazon Technologies, Inc. v. Zhang Biao Cao / Cao Zhang Biao / Zhang Biao / Cao Zhangbiao / Wang Li Hong / Li Hui, FA1711001758917 (Forum Dec. 20, 2017) (“Respondent’s use of multiple aliases and other false WHOIS information is calculated to frustrate the purposes of WHOIS and obscure registrant’s true identity, and this is further evidence of bad faith.”).
Complainant concludes alleging that Respondent registered and is using the confusingly similar disputed domain name in bad faith, while availing of a privacy registration service to conceal its identity and causing the disputed domain name to resolve to a website that purports to propose services competing with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides a service for trading in securities and derivatives using the VIX trademark and is the owner of a number of trademark registrations including the following:
· United States registered service mark VIX, registration number 2545842, registered on March 12, 2002 on the Principal Register for services in international class 36;
· EUTM VIX registration number 7001671, registered until second 2009 for services in class 36;
· EUTM VIX registration number 13154943, registered on January 22, 2015 for goods and services in classes 9, 16 AND 35;
· Canadian registered trademark VIX, registration number TMA811875, registered on November 17, 2011 for services in class 36;
· United Kingdom registered trade mark VIX registration number 3067330 registered on November 21, 2014 for goods in class 9 and services in class 36;
· International trademark VIX registration number 1225817 registered on August 5, 2014 for services in class 36
The disputed domain name <vix-token.com> was registered on November 19, 2019 and resolves to a website that purports to offer services similar to those offered by Complainant.
There is no information available about Respondent except that which is provided in the Registrars published WHOIS, the information provided in the Complaint, and the information provided by the Registrar in response to the request from the Forum to provide registration details of the disputed domain name in the course of this proceeding, which revealed the registered name of Respondent which had availed of our privacy service to conceal its identity on the published WHOIS..
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:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in this Complaint; however, the Panel may deny relief where the 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”).
Complainant has provided uncontested convincing evidence of its rights in the VIX trademark and service mark acquired through its ownership of the above-mentioned registered trademarks and its use of the mark in securities and derivatives trading service since 1993.
The disputed domain name <vix-token.com> consists of Complainant’s trademark in its entirety, the addition of a hyphen, the word “token” and the gTLD <.com> extension.
Complainant’s VIX trademark is the initial and only distinctive element in the disputed domain name. Neither the addition of the hyphen nor the word “token” contribute any distinctive characteristic to the disputed domain name.
For the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because the domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name providing evidence that Respondent is not commonly known by the disputed domain name; that a business entity search with the California Secretary of State department showed no results for “vix wallet” as a registered entity; and that a Google search against the same terms, which produced only 200 results none of which showed an existing individual or entity under that name”.
Complainant has furthermore provided evidence that the disputed domain name is not being used either to make bona fide offering of goods and services or for any non-commercial or fair use. The screenshot of the website to which disputed domain name resolves is not what it seems at first glance and it appears to be a sham. There are numerous typographical errors in the content, the purported links social media accounts are inoperative, and the content deteriorates to “Lorem Ipsum” placeholder text which is commonly used on the Internet to demonstrate the visual form of a document or a typeface without relying on meaningful content.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered long after Complainant acquired its rights, goodwill and reputation in the VIX mark. It Incorporates Complainant’s distinctive trademark separated from the word “token” by a hyphen. The word “token” is a reference to cryptocurrency in the context of the content on the website to which the disputed domain name resolves.
Therefore this Panel finds, on the balance of probabilities, that the disputed domain name was chosen registered in order to reference and take predatory advantage of Complainant’s reputation and goodwill in the VIX mark.
Complainant has provided uncontested convincing evidence that Respondent is using the disputed domain name to resolve to the website which is designed to attract Internet traffic to links to services in the same field of activity as Complainant which is most probably a sham.
This Panel finds therefore that on the balance of probabilities, Respondent has registered and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and the disputed domain name was therefore registered and is being used in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vix-token.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________
James Bridgeman SC
Panelist
Dated: May 16, 2020
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