Cboe Exchange, Inc. v. hua ru
Claim Number: FA2109001963287
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is hua ru (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cboex.vip>, <cboexap.vip>, and <cboexap.finance>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2021; the Forum received payment on September 10, 2021.
On September 13, 2021 and September 15, 2021, Namecheap, Inc. confirmed by e-mail to the Forum that the <cboex.vip>, <cboexap.vip>, and <cboexap.finance> 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 September 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2021 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.vip, postmaster@cboexap.vip, postmaster@cboexap.finance. Also on September 16, 2021, 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 October 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Cboe Exchange, Inc., operates a securities and derivatives exchange company.
Complainant has rights in the CBOE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names are identical or confusingly similar to Complainant’s CBOE mark, only differing by the addition of the letter “x” or letters “xap” and adding either the “.vip” or “.finance” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names as it is not commonly known by any of the at-issue domain names and is neither an authorized user nor licensee of the CBOE mark. Additionally, Respondent does not use any of the at-issue domain names for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the at-issue domain names to pass off as Complainant in an attempt to phish for Internet users’ personal and financial information. Respondent uses the domain names to address websites which purport to offer services that compete directly with Complainant’s business.
Respondent registered and uses the <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names in bad faith. Respondent uses the at-issue domain name to pass off as Complainant and phish for internet users’ personal or financial information, disrupting Complainant’s business and leading to commercial gain for Respondent. Alternatively, Respondent offers services which compete directly with Complainant’s business. Respondent’s use of a privacy service when registering the domain names also provides evidence of bad faith. Additionally, Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the CBOE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CBOE mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CBOE trademark.
Respondent uses the at-issue domain names to pose as Complainant in furtherance of a phishing scheme and to address websites that pretend to offer services that compete with services offered by 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. 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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the CBOE mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names each consist of Complainant’s CBOE trademark with an additional characters, either “x” or “xap,” appended thereto and concluded with either the top level “.vip” or “finance.” Under the Policy the differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish any of the domain names from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names are each confusingly similar to Complainant’s CBOE trademark under Policy ¶ 4(a)(i). 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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
The WHOIS information identifies “hua ru” as the registrant of the <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names and there is nothing in the record before the Panel that indicates that Respondent is known by any of the of the at-issue domain names. Given the foregoing, the Panel finds that Respondent is not commonly known by any at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent uses the <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names to pass itself off as Complainant in connection with a phishing scheme. Such use is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name.
Respondent’s <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the at-issue domain names to pass itself off as Complainant so as to facilitate a phishing scheme whereby Respondent, as CBOEX, contacts internet users and pretends to be related to CBOE. Respondent invites such internet users to trade using one of their at-issue domain name related website. Complainant has received reports that individuals, believing they are in some way dealing with Complainant, have been tricked by Respondent and have lost funds under such scheme. Respondent’s use of the at-issue domain names in this manner is disruptive to Complainant’s business and confuses internet users as to the sponsorship of the domain names thus showing Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See 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); see also, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Additional, although Respondent’s websites appear to only pretend to offer legitimate services Respondent is nevertheless offering services that nominally compete with Complainant. Doing so is further evidence of both bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Finally, Respondent registered <cboex.vip>, <cboexap.vip>, and <cboexap.finance> knowing that Complainant had trademark rights in CBOE. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the registration of multiple domain names containing Complainant’s mark, and from Respondent’s use of the domain names to hold itself out as Complainant and defraud third-parties as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used its <cboex.vip>, <cboexap.vip>, and <cboexap.finance> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
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.vip>, <cboexap.vip>, and <cboexap.finance> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 12, 2021
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