OptionsXpress Holdings, Inc. v. yao hu / OPTIONSXPRESS INC
Claim Number: FA1306001504723
Complainant is OptionsXpress Holdings, Inc. (“Complainant”), represented by Charles C. Valauskas of Valauskas Corder LLC, Illinois, USA. Respondent is yao hu / OPTIONSXPRESS INC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oxpfx.us>, registered with WEB COMMERCE COMMUNICATIONS, LTD.
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.
Michael A. Albert, as Panelist
Honorable James A. Carmody, as Panelist
Scott R. Austin, as Panelist, Chair
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2013; the National Arbitration Forum received a hard copy of the Complaint and payment on June 13, 2013.
On June 18, 2013, WEB COMMERCE COMMUNICATIONS, LTD. confirmed by e-mail to the National Arbitration Forum that the <oxpfx.us> domain name is registered with WEB COMMERCE COMMUNICATIONS, LTD. and that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS, LTD. has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS, LTD. 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 21, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 11, 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 19, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Administrative Panel (the “Panel”), the National Arbitration Forum appointed Michael A. Albert, Arbitrator, Honorable James A. Carmody, Arbitrator, and Scott R Austin, Arbitrator, Chair, as the Panel and each as Panelist.
Having reviewed the communications records, the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant has been using the mark OPTIONSXPRESS since at least as early as 2000 and the mark OX since at least as early as 2003 to identify Complainant as the source of a variety of financial, trading, investing, and investment fund transfer and transaction services, as well as educational and training products.
2. Complainant has registered the OPTIONSXPRESS word mark all over the world, including China, Singapore, Hong Kong, Australia, Canada and with the United States Patent and Trademark Office (“USPTO”) for securities trading and investing services via the internet in International Class 36 (e.g., Reg. No. 2,618,175 registered September 10, 2002);
3. Complainant also registered the OX word mark in many countries and with the USPTO for financial services, namely, investment fund transfer and transaction services in International Class 36 (e.g., Reg. No. 3,747,888, registered September 9, 2010);
4. Respondent registered the <oxpfx.us> domain name on January 11, 2010.
5. Respondent’s <oxpfx.us> domain name is confusingly similar to Complainant’s OX mark.
6. The presence of the letter “p” may increase confusing similarity, as consumers may perceive the “oxp” portion of the domain name to be an abbreviation of the mark OPTIONSXPRESS.
7. The descriptive component “fx” in the Respondent’s disputed domain name actually increases the confusing similarity between the disputed domain name and the Complainant’s mark OX.
8. Respondent has no rights or legitimate interests in the disputed domain name because Respondent registered both similar marks and domain names long after Complainant had registered its marks, without Complainant’s authority.
9. Respondent hosts a website at the disputed domain name that posts click-through advertising, which fails to demonstrate a bona fide offering of goods or services.
10. In 2010 Respondent registered a related domain name – oxpfx.com – also the subject of a UDRP proceeding, which domain name hosts a website showing financial investing information using Complainant’s mark.
B. Respondent makes the following contentions:
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registrations for the OPTIONSEXPRESS and OX word marks throughout the U.S. and around the world.
Complainant’s marks were registered in the U.S and many other countries well before Respondent registered its domain name on January 11, 2010;
Respondent’s disputed domain name, <oxpfx.us> domain name is substantially similar to Complainant’s mark, because it incorporates Complainant’s OX mark in its entirety as the first part of the disputed domain name, and adds only letters following which could be construed as the abbreviation “OXP” for Complainant’s OPTIONSEXPRESS mark and adds letters “fx” which could be interpreted as descriptive of Complainant’s “foreign exchange” services as well as the descriptive country-code top-level domain (“ccTLD”) “.us.” As such, these additions do not distinguish the disputed domain name from Complainant’s marks but may in fact add to its confusing similarity to the marks.
Respondent’s WHOIS information identifies Respondent “yao hu” as registrant of the disputed domain name and registrant’s organization as OPTIONSEXPRESS INC.
Respondent is not commonly known by Complainant’s OX or OPTIONSEXPRESS marks, nor is Respondent licensed by Complainant to use either of Complainant’s marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
Respondent uses the disputed domain name to offer hyperlinks to other businesses’ websites, financial services that are in competition with
Complainant’s financial services.
The products and services offered by Complainant under its OPTIONSEXPRESS and OX marks are confusingly similar and related to the identified financial services offered by Respondent.
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.
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.
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant asserts that it is the owner of the OX mark, as well as the OPTIONSXPRESS mark, and provides evidence of its various international trademark registrations, including registrations with the USPTO for the OPTIONSXPRESS mark (Reg. No. 2,618,175, filed December 13, 2001, registered September 10, 2002) and the OX mark (Reg. No. 3,747,888 filed November 11, 2005, registered February 9, 2010). The filing dates of these marks predate Respondent’s registration of its disputed domain name by at least four years. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) in demonstrating its rights in the claimed marks through federal trademark registrations, and that such rights date back to the date on which Complainant filed its respective trademark applications. 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); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant next argues that Respondent’s the <oxpfx.us> domain name is confusingly similar to Complainant’s OX mark. Complainant asserts that the domain name incorporates the OX mark in its entirety. Complainant argues that the presence of the letter “p” may increase confusing similarity, as consumers may perceive the “oxp” portion of the domain name to be an abbreviation of Complainant’s OPTIONSEXPRESS mark. Complainant asserts the remaining letters of the disputed domain name, “fx”, constitutes a descriptive term for Complainant’s “foreign exchange” financial services and a ccTLD “.us.”
The Panel finds that neither descriptive terms, like “fx,” nor ccTLDs impact a finding of confusing similarity. See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The Panel agrees, therefore, that by using the OX mark, and affixing three letters that create an abbreviation of Complainant’s mark, a descriptive term for its services and the ccTLD “.us” to the domain name, the <oxpfx.us> domain name is confusingly similar to Complainant’s OX mark for the purposes of Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain
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), and then 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.”).
Complainant claims that it has located no evidence that establishes that Respondent used the domain name or any related marks prior to 2010, when Respondent registered the <oxpfx.us> domain name. Complainant also asserts that Respondent used the OPTIONSEXPRESS mark on a website hosted at the disputed domain name to identify financial services similar to Complainant’s services. Complainant argues, therefore, that Respondent’s post-2010 uses of the OPTIONSXPRESS mark and marks confusingly similar to the OX mark can only be infringing uses, not legitimate uses on which the Respondent can rely to establish legitimate trademark rights. Respondent, having filed no Response in this Proceeding, makes no contentions with regards to Policy ¶ 4(a)(ii) and has offered no evidence of rights or legitimate interests in marks identical to the disputed domain name under Policy ¶ 4(c)(i) .
Prior panels have determined that a Respondent fails to demonstrate rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) if the respondent does not provide evidence showing that it has any trademarks or service marks in the domain name. 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). The Panel concludes, therefore, that without evidence demonstrating trademark rights in marks identical to the disputed domain name pursuant to Policy ¶ 4(c)(i), Respondent lacks rights and legitimate interests in its disputed domain name required under Policy ¶ 4(a)(ii).
Similarly, Complainant claims Respondent has not shown, and as an infringer using Complainant’s marks without license or other authorization Respondent cannot show that its domain name is protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or 4(c)(iv), respectively. Complainant makes the claim that Respondent uses the disputed domain name to lead to a website displaying click-through advertising, and argues that such use is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. In support of its claims, Complainant’s Annex D shows a screen shot of Respondent’s resolving webpage, which provides content relating to financial markets, trading, and investing, as well as advertisements and hyperlinks, and a page with drop-down boxes and space available for website visitors to disclose their name, social security number, date of birth, and other private and confidential information.
The Panel finds, therefore, that Respondent’s use of the resolving website to display advertising, competing services, and invite website visitors to reveal sensitive personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or 4(c)(iv), respectively. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii)); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to [UDRP] ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to [UDRP] ¶ 4(c)(iii).”).
Respondent is not commonly known by the disputed domain name. The WHOIS information indicates that the domain name’s registrant is “yao hu” and that the registrant’s organization is “OPTIONSXPRESS INC.” Respondent, incorporated itself under the name “Optionsxpress Inc. Limited” on August 18, 2010, which was far after Complainant’s 2004 date of registration of its OPTIONSEXPRESS mark in Hong Kong. See Complainant’s Annex A2.4. Complainant asserts that Respondent has never been authorized to use any of its marks in a domain name. The Panel concludes that, although it appears that Respondent may have been known by the unauthorized use of the name OPTIONSXPRESS INC., Respondent has no permission to use Complainant’s registered OX mark in the disputed domain name <oxpfx.us>. This finding, coupled with Respondent’s failure to produce any evidence refuting that claim, serves to demonstrate that Respondent is not commonly known by the <oxpfx.us> domain name, and thus lacks rights or legitimate interests in the domain under Policy ¶ 4(c)(iii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Registration or Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent registered and uses the at-issue domain name in bad faith.
Complainant alleges that Respondent attempts to attract Internet users to its website by using a confusingly similar domain name, in order to make a financial profit by offering competing services. The Panel finds that Respondent registered and uses the <oxpfx.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), as shown by the domain name’s function as a website offering competing investment and financial services to those Complainant offers under its OX mark. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant also asserts that Respondent “clearly knew” about Complainant’s rights in the OX mark before Respondent registered the <oxpfx.us> domain name. Complainant supports its argument by claiming that Respondent posted at the resolving website various honors and awards that it claimed to have won, when indeed, it was Complainant who won the awards. Complainant further argues that Respondent’s registration of a “strikingly similar domain name and use with financial trading and investing services” suggests that Respondent had actual knowledge of Complainant’s registered mark. The Panel agrees that Respondent demonstrates actual knowledge of Complainant’s mark by its use of the resolving website to host competing services at a confusingly similar domain name, which at one point incorporated Complainant’s OPTIONSEXPRESS mark as well as the OX mark in the disputed domain name, which Respondent registered long after Complainant’s marks had been registered and after cease and desist letters had been sent to Respondent by Complainant. The Panel finds the foregoing actions taken by Respondent constitute bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oxpfx.us> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panel Chair
Michael A. Albert
Honorable James A. Carmody
Dated: August 5, 2013
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