Cboe Exchange, Inc. v. Sarany Oum
Claim Number: FA2102001930796
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Sarany Oum (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboebitcoin.com>, registered with GoDaddy.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2021; the Forum received payment on February 3, 2021.
On February 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cboebitcoin.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that 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 February 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2021 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@cboebitcoin.com. Also on February 10, 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.
A timely Response was received and determined to be complete on February 10, 2021.
Complainant’s timely additional submission was received on February 15, 2021.
On February 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
All submissions were considered by the Panel.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a prominent securities and derivatives exchange. Complainant has rights in the CBOE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. CBOE Reg. No. 2,484,436, registered Sep. 4, 2001; CBOE VEST Reg. No. 5,318,395, registered Oct. 24, 2017). Respondent’s <cboebitcoin.com> domain name, registered November 2, 2017, is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, and adds the word “bitcoin”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cboebitcoin.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its CBOE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead uses the disputed domain name’s resolving website to redirect to the webpage of a direct competitor.
Respondent registered and uses the <cboebitcoin.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by redirecting the disputed domain name’s resolving website to the webpage of a competing exchange service. Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the CBOE mark. Respondent initially disguised its identitiy with a WHOIS privacy service.
B. Respondent
Complainant does not own the word “bitcoin” and its interest in the domain name, which Respondent has held for years, only appeared after Respondent contacted Complainant after it published articles about entering the cryptocurrency market.
C. Complainant’s Additional Submission
Respondent does not dispute Complaint’s rights in the CBOE mark. Respondent’s submission suggests Respondent was attempting to sell the domain name to Complainant which is evidence of bad faith.
For the reasons set forth below, based upon the allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <cboebitcoin.com> domain name.
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.
Complainant claims rights in the CBOE mark through its registrations with the USPTO. (e.g. CBOE Reg. No. 2,484,436, registered Sep. 4, 2001; CBOE VEST Reg. No. 5,318,395, registered Oct. 24, 2017). Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel agrees and finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cboebitcoin.com> domain name is identical or confusingly similar to Complainant’s CBOE mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive word along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The disputed domain name incorporates Complainant’s mark in its entirety and adds the generic or descriptive word “bitcoin”, along with the “.com” gTLD. The Panel finds that Respondent’s <cboebitcoin.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <cboebitcoin.com> domain name, nor has Complainant authorized or licensed Respondent to use its CBOE mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information of record, as well as the response, identify Respondent as “Sarany Oum”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its CBOE mark in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <cboebitcoin.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to redirect to a competitor website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant provides a screenshot of the disputed domain name’s resolving website, which redirects to the website of a competing finance and exchange service. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and, has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered the <cboebitcoin.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the CBOE mark. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in demonstrating bad faith, actual knowledge may be sufficient, and may be demonstrated by Respondent registering a disputed domain name that incorporates a well-known and/or registered trademark, as well as Respondent’s use of the disputed domain name’s resolving website. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The disputed domain name incorporates Complainant’s CBOE mark in its entirety. Complainant’s screenshot shows that the disputed domain name’s resolving website redirects to a direct competitor of Complainant. This is evidence that Respondent registered the disputed domain name with bad faith knowledge of Complainant’s rights in the CBOE mark under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s bad faith is further evidenced by its use of a WHOIS privacy service. Concealing one’s identity on WHOIS may contribute to an independent finding of bad faith under Policy ¶ 4(a)(iii), even though it may not be dispositive by itself. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The disputed domain name’s WHOIS information of record was initially hidden behind a WHOIS privacy service. This evidence contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cboebitcoin.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
February 19, 2021
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