Cboe Exchange, Inc. v. Naijajamz jamz / naijajamz247 plc
Claim Number: FA1910001868762
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Thomas P. White of Schiff Hardin LLP, Illinois, USA. Respondent is Naijajamz jamz / naijajamz247 plc (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cboe-trading.com> and <cboetradeassets.com>, registered with NameCheap, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2019; the Forum received payment on October 28, 2019.
On October 29, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <cboe-trading.com> and <cboetradeassets.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2019 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@cboe-trading.com, postmaster@cboetradeassets.com. Also on November 4, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CBOE. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by the same names; and the domain names have not been used other than for a nefarious purpose.
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the CBOE trademark in connection with its business of exchange-traded stock options;
2. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 2,484,436, registered September 4, 2001 for the trademark, CBOE;
3. the disputed domain names were registered in May and September of 2019;
4. the domain names resolve to websites offering similar services to those provided by Complainant under the trademark;
5. in addition, the domain names have been used to send emails which pose as having originated from Complainant.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark CBOE with the USPTO, a national trademark authority.
The disputed domain names are confusingly similar to Complainant’s trademark.
For the purposes of comparison of the disputed domain names with the trademark the gTLD, “.com”, can be disregarded. So, too, the Panel finds that the words “trading” or “trade assets” are, in the context of the services provided, of no distinguishing value (see, for example, Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) finding <kohlerbaths.com> confusing similarity since it merely added the descriptive term ‘baths,’ which was an obvious allusion to complainant’s business, to complainant’s mark).
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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 trademark 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 names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The name of Respondent was shielded by a privacy service. Once revealed in consequence of these proceedings, nothing indicates that Respondent might be commonly known by the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties. Further, the use of the domain names is clearly in bad faith and cannot give rise to any rights or legitimate interests. In particular, no rights or legitimate interests can accrue by reason of use of the domain names to resolve to websites offering competitive services. Most certainly, no rights or legitimate interests can arise from their fraudulent use as part of an email address impersonating Complainant’s former deputy general counsel (see, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”; Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”; Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). interests within the meaning of the Policy.”).
A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and 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.’
The Panel observes that the application of any of those scenarios is, on the facts, less appropriate than the simple findings that the disputed domain names were registered in bad faith and then used in bad faith. Complainant and its distinctive trademark were obviously targeted. The registrations were made in bad faith. Further, Respondent’s use of the disputed domain names as described to perpetrate a fraud is manifestly bad faith use (see, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboe-trading.com> and <cboetradeassets.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 4, 2019
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