OptionsXpress Holdings, Inc. v. Donaldson Brown / Optionsxprees INC / yao hu / OPTIONSXPRESS INC
Claim Number: FA1305001502813
Complainant is OptionsXpress Holdings, Inc. (“Complainant”), represented by Charles C. Valauskas of Valauskas Corder LLC, Illinois, USA. Respondent is Donaldson Brown / Optionsxprees INC / yao hu / OPTIONSXPRESS INC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <optionsxpress.us> and <optionsxprees.us>, registered with Name.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Daniel B. Banks, Jr., (Ret.) and Honorable John J. Upchurch, (Ret.), Panelists, and Sandra J. Franklin, Panelist and Panel Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received a hard copy on May 31, 2013.
On June 3, 2013, Name.Com confirmed by e-mail to the National Arbitration Forum that the <optionsxpress.us> and <optionsxprees.us> domain names are registered with Name.Com and that Respondent is the current registrant of the names. Name.Com has verified that Respondent is bound by the Name.Com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 13, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 3, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Daniel B. Banks, Jr., (Ret.) and Honorable John J. Upchurch, (Ret.) as Panelists, and Sandra J. Franklin as Panelist and Panel Chair.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of 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 usTLD Policy, usTLD Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <optionsxpress.us> and <optionsxprees.us> domain names are confusingly similar to Complainant’s OPTIONSXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <optionsxpress.us> and <optionsxprees.us> domain names.
3. Respondent registered and used the <optionsxpress.us> and <optionsxprees.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the OPTIONSXPRESS mark (Reg. No. 2,618,175, registered September 10, 2002), used in connection with financial services.
Respondent registered the <optionsxpress.us> domain name on August 15, 2012, and the <optionsxprees.us> domain name on April 1, 2012. The domain names resolve to websites featuring click-through advertising or an error page.
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 or 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel finds that Complainant’s registration of the OPTIONSXPRESS mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under [UDRP] ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends that Respondent’s domain name <optionsxpress.us> appropriates the entirety of, and therefore is nearly identical to, Complainant’s OPTIONSXPRESS mark. Indeed, the only difference between the domain name and Complainant’s mark is Respondent’s addition of the ccTLD of “.us,” which is irrelevant to a Policy ¶ 4(a)(i) determination. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Thus, the Panel finds that Respondent’s <optionsxpress.us> domain name is identical to Complainant’s OPTIONSXPRESS mark under Policy ¶ 4(a)(i).
Respondent’s domain name <optionsxprees.us> incorporates nearly all of Complainant’s mark, and merely substitutes of the letter “e” for the letter “s” in Complainant’s mark. The Panel finds that Respondent’s substitution of letters in Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Again, Respondent’s addition of the ccTLD “.us” to its <optionsxprees.us> domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Thus, the Panel finds that Respondent’s <optionsxprees.us> domain name is confusingly similar to Complainant’s OPTIONSXPRESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that, in order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides four elements that a respondent may satisfy: (i) a respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; or (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that there is no evidence to demonstrate that Respondent owns any service marks or trademarks that reflect the <optionsxprees.us> domain name and thus Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).
Complainant contends that it has never authorized Respondent to use any of its marks. The WHOIS record lists “Donaldson Brown / Optionsxprees INC / yao hu / OPTIONSXPRESS INC” as the registrant of the <optionsxpress.us> and <optionsxprees.us> domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant shows that Respondent’s <optionsxprees.us> domain name resolves to an error page stating “Oops! Google Chrome could not connect to optionsxprees.us.” Respondent’s failure to make an active use of the <optionsxprees.us> domain name demonstrates that Respondent is not using the domain names in connection with a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to UDRP ¶ 4(c)(iii).”).
Complainant further demonstrates that Respondent’s <optionsxpress.us> domain name resolves to a webpage that appears to be in Chinese, featuring click-through links. The Panel finds that Respondent’s use of the <optionsxpress.us> domain name to provide click-through ads does not constitute a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the <optionsxpress.us> domain name primarily for the purpose of disrupting the business of Complainant by diverting potential customers from Complainant to the click-through links featured by Respondent. The Panel agrees and finds that Respondent is disrupting Complainant’s business, bad faith use or registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent intentionally attempted to attract, for commercial gain, Internet users to the related website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the respective websites or locations or of a product or service on Respondent’s website or location. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel concluded that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).” The Panel similarly finds that Respondent is using the <optionsxpress.us> domain name to provide hyperlinks and generate a commercial gain therefrom, bad faith under Policy ¶ 4(b)(iv).
Respondent’s <optionsxprees.us> domain name resolves to an error page stating “Oops! Google Chrome could not connect to optionsxprees.us.” The Panel finds that Respondent’s failure to make an active use of the domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the [UDRP]).
Complainant alleges that Respondent knew about Complainant’s rights in the mark OPTIONSXPRESS and provides evidence that, in Respondent’s websites at <oxpfx.com> and <oxpfx.us>, Respondent boasts that it has received industry honors that were actually won by Complainant. The Panel finds that, due to Respondent’s knowledge of Complainant’s awards and honors, Respondent had actual knowledge of the mark and Complainant's rights, further evidence of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <optionsxpress.us> and <optionsxprees.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist and Panel Chair
Honorable Daniel B. Banks, Jr., (Ret.), Panelist
Honorable John J. Upchurch, (Ret.), Panelist
Dated: July 301, 2013
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