national arbitration forum

 

DECISION

 

OptionsXpress Holdings, Inc. v. jions / Optionsxpress INC

Claim Number: FA1305001502814

PARTIES

Complainant is OptionsXpress Holdings, Inc. (“Complainant”), represented by Charles C. Valauskas of Valauskas Corder LLC, Illinois, USA.  Respondent is jions / Optionsxpress INC (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oxpfx.com>, registered with XIN NET TECHNOLOGY CORPORATION.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

 

The Hon. James A. Carmody (ret.), The Hon. Charles K. McCotter, Jr. (ret.) and Debrett G. Lyons as panelists (“Panel”).

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received payment on May 31, 2013. The Complaint was submitted in both English and Chinese.

 

On June 3, 2013, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <oxpfx.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name.  XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 June 11, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 1, 2013 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@oxpfx.com.  Also on June 11, 2013, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 10, 2013, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. James A. Carmody (ret.), The Hon. Charles K. McCotter, Jr. (ret.) and Debrett G. Lyons (chair) as Panel.

 

Having reviewed the communications records, Panel finds that the National Arbitration 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.  Panel notes that the Registration Agreement is in Chinese, thereby making the language of the proceedings Chinese however pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings be conducted in English.  Accordingly, Panel has made its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that it deemed applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in the term OX and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant has provided online brokerage services since 2000 by reference to the trademark OPTIONSXPRESS and has provided online financial and investment services by reference to the trademark OX.

2.    Complainant is the owner of, inter alia, United States Trademark Reg. No. 3,747,888 registered on February 9, 2010 for the word mark OX.

3.    The disputed domain name was registered on February 27, 2010.

4.    The disputed domain name resolves to a Chinese language website which appears to offer securities.

5.    Respondent has also registered the domain names <oxpfx.us>, <optionsxpress.us> and <optionsxprees.us>.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry – an investigation into whether a complainant has rights in a trademark, together with an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights for the purposes of paragraph 4(a)(i).  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for OX, Panel is satisfied that it has trademark rights in that term (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)).

 

For the purposes of comparing the disputed domain name with the trademark, the non-distinctive gTLD, “.com”, can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  The comparison then resolves to the term OXPFX with the trademark OX.  In that respect it is Complainant’s submission that the term OXPFX is composed of the trademark together with other descriptive matter, namely the letters “FX” being a known shorthand for the words “foreign exchange” and one of the principal services provided under the trademark, plus the letter “P” which is said to be indicative of Complainant’s trading name “Options XPress.”

At face value, the terms OXPFX and OX might not be regarded as particularly similar however Panel is in broad agreement with Complainant’s argument.  Although there continues to be debate as to whether, for the purposes of determining confusing similarity under this aspect of the Policy, the reputation of the trademark should be taken into account, Panel does not consider this uncontested case to be the proper place to further that debate and is prepared to find that the trademark, or the integer OXP, is the recognizable part of the domain name, a perception likely assisted by the addition of the letters “FX”.

 

Panel finds the terms to be confusingly similar and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

 

The publicly available WHOIS information identifies Respondent as “jions / Optionsxpress INC.”  Complainant notes the existence of a Hong Kong company by the name of “OPTIONSXPRESS INC. LIMITED” but there is no compelling evidence that Respondent controls that company or might otherwise be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights. Moreover, earlier decisions under this Policy have generally insisted on exact correspondence between the disputed domain name and a respondent’s name in order for paragraph 4(c)(ii) to be engaged.

 

There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.  Nor is there any evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  On the contrary, Complainant provides evidence that the domain name resolves to a Chinese language website which, in the absence of a full translation, appears to include prices for securities.  Additionally, Complainant alleges that the website makes claims to industry awards in fact won by Respondent, suggesting that the website is either affiliated with, or belongs to, Complainant.

 

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under one or other of paragraphs 4(b)(iii) and (iv) above.   Earlier decisions under this Policy have taken a broad view of the word “competitor” as it appears in paragraph 4(b)(iii).  Insofar as it is possible to draw conclusions about the content of the Chinese language website, it would appear that the offering is stocks and other securities.  Use of Complainant’s trademark to promote services in direct competition with Complainant disrupts Complainant’s business and is evidence of Respondent’s bad faith.

 

In respect of paragraph 4(b)(iv), Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark.  Panel notes on the resolving website what appear to be various banner advertisements and accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from the website associated with the disputed domain name by way of referral fees from those advertisers.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.

 

Insofar as there might be doubt as to Respondent’s motives, Panel notes the further evidence in the Complaint that Respondent has also registered the domain names <oxpfx.us>, <optionsxpress.us>, and <optionsxprees.us>.

 

Panel finds both registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three of the elements required under the ICANN Policy, Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the domain name, <oxpfx.com>, be TRANSFERRED from Respondent to Complainant.

 

 

 

The Hon. James A. Carmody (ret.)

 

The Hon. Charles K. McCotter, Jr. (ret.)

 

Debrett G. Lyons (chair)

 

Panelists

Dated:  July 17, 2013

 

 

 

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