Cboe Exchange, Inc. v. tou Guang
Claim Number: FA2202001983794
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is tou Guang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboex-u.com>, registered with MAFF Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2022; the Forum received payment on February 9, 2022.
On February 17, 2022, MAFF Inc. confirmed by e-mail to the Forum that the <cboex-u.com> domain name is registered with MAFF Inc. and that Respondent is the current registrant of the name. MAFF Inc. has verified that Respondent is bound by the MAFF Inc. 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 18, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 10, 2022 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@cboex-u.com. Also on February 18, 2022, the Chinese and English language 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 March 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in Chinese, thereby making the language of the proceedings Chinese. However, the Panel has a wide discretion under UDRP Rule 11(a) to determine that in all the circumstances, it would be appropriate that the proceeding should be conducted in a different language, in the present case in English. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Respondent is not currently using the domain name for an active website. However, it appears clear to the Panel that Respondent’s intention was to use it in effect to copy Complainant and pretend that it was offering the same services as Complainant which necessitated the use of words in the English language. It should also be remembered that the financial industry, where Respondent clearly intended to make use of the domain name, necessarily makes extensive use of the English language. Moreover, the evidence shows that the present inactive use of the domain name reveals some, albeit limited, English characters and words. Further, Complainant is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents in the case into English. Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that there are circumstances that justify the conclusion that it would be appropriate to have the proceeding conducted in the English language and the Panel so determines.
A. Complainant
Complainant made the following contentions.
Complainant provides a variety of financial trading products in multiple asset classes, including options, futures, equities, exchange-traded products, and global foreign exchange. Complainant asserts rights in the CBOE mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,613,242, registered on November 20, 2018). See Compl. Ex. C. Respondent’s <cboex-u.com> domain name is identical or confusingly similar to Complainant’s CBOE mark, as it incorporates the mark in its entirety, only adding the random letters “u” and “x”, as well as a hyphen and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <cboex-u.com> domain name. Complainant has not authorized or licensed Respondent to use the CBOE mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name currently resolves to an inactive website.
Respondent registered and uses the disputed domain name in bad faith. Respondent is not actively using the disputed domain name, nor does it provide any intent to use the disputed domain name for a bona fide purpose. Similarly, Respondent had constructive and/or actual notice of Complainant’s rights in the CBOE mark, evidenced by the fame and notoriety of Complainant’s mark. Finally, Respondent’s use of false contact information further indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a variety of financial trading products in multiple asset classes, including options, futures, equities, exchange-traded products, and global foreign exchange.
2. Complainant has established its trademark rights in the CBOE mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,613,242, registered on November 20, 2018).
3. Respondent registered the <cboex-u.com> domain name on September 18, 2021.
4. Respondent has caused the disputed domain name to resolve to an inactive website.
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 a complaint; however, the Panel may deny relief where a 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the CBOE mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 5,613,242, registered on November 20, 2018). See Compl. Ex. C. Registering a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds Complainant has sufficiently established rights in the CBOE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CBOE mark. Complainant argues Respondent’s <cboex-u.com> domain name is identical or confusingly similar to Complainant’s CBOE mark, as it incorporates the mark in its entirety, only adding random letters, a hyphen, and the “.com” gTLD. The mere addition of letters and a hyphen is not sufficient to differentiate a disputed domain name from the mark it incorporates. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel therefore finds the <cboex-u.com> is confusingly similar to Complainant’s CBOE mark, since it only adds two letters to the trademark, a hyphen, and a gTLD.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s CBOE trademark and to use it in its domain name, adding only random letters and a hyphen, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <cboex-u.com> domain name on September 18, 2021;
(c) Respondent has caused the disputed domain name to resolve currently to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights and legitimate interests in the <cboex-u.com> domain name because Respondent is not authorized to use the CBOE mark, nor is Respondent commonly known by the disputed domain name. To determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “tou Guang” and there is no evidence to suggest Complainant authorized Respondent to use the CBOE mark in any way. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <cboex-u.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website is currently inactive. When a respondent fails to use the disputed domain name actively, and fails to show any preparations to use the disputed domain name for a bona fide purpose, the Panel may find the respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use. See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). In the present case, the Panel notes screenshots of the resolving website, which show it is currently inactive. See Compl. Ex. E. The Panel therefore concludes that Respondent is not using the disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <cboex-u.com> domain name in bad faith pursuant to Policy ¶ 4(a). When analyzing bad faith, the Panel may look beyond Policy ¶ 4(b) to the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Specifically, Complainant submits that Respondent registered and uses the disputed domain name in bad faith because the resolving website lacks any substantive content and there are no indications that it is in preparations to be used. Failure to use a disputed domain name actively may be a sign of bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). In the present case, the Panel notes the screenshot of the resolving website. See Compl. Ex. E. As the website remains inactive, the Panel finds Respondent acted in bad faith when registering the <cboex-u.com> domain name.
Secondly, Complainant argues Respondent had constructive and/or actual notice of Complainant’s rights in the CBOE mark, evidenced by the CBOE mark’s fame. Although panels have previously declined to recognize constructive notice as sufficient for a finding of bad faith, actual notice may be deduced from the fame and notoriety of the mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides evidence of the mark’s notoriety. See Compl. Exs. B-D; see also Compl. Declaration of Jordan Newark. As the Panel agrees that Respondent had actual notice of Complainant’s rights in the mark, the Panel finds Respondent acted in bad faith in registering the domain name.
Thirdly, Complainant states Respondent registered the <cboex-u.com> domain name with false contact information. Using false or misleading contact information when registering a disputed domain name is evidence of bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”); see also Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). As the Panel finds Respondent used false contact information, the Panel also finds Respondent acted in bad faith.
The foregoing matters show that Respondent registered the domain name in bad faith. Retaining it so that it might well and probably would be used for an improper purpose in the future while it remains under the control of Respondent clearly amounts to use in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboex-u.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 17, 2022
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