Cboe Exchange, Inc. v. yang zhi
Claim Number: FA2110001969934
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is yang zhi (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboe.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2021; the Forum received payment on October 20, 2021.
On October 20, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <cboe.finance> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 October 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@cboe.finance. Also on October 21, 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 November 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the CBOE mark established by its ownership of registrations of the service marks described below, and extensive use of the CBOE mark, by itself and its affiliated entities, in its securities and derivatives exchange business on its Internet trading platform at <www.cboe.com>, and in major markets across the world including Canada, Japan, China, the European Union, and Mexico, where it claims to own similar service mark registrations.
Complainant contends that the disputed domain name is confusingly similar to its CBOE mark arguing that it contains the mark in its entirety and in fact consists of nothing more than the CBOE mark followed by the generic Top Level Domain (“gTLD”) suffix <.finance>, which it argues, is directly relevant to Complainant’s own services. See Truist Financial Corporation v. Zaria Ernser, FA 2106001951525 (Forum Aug. 2, 2021) (finding confusing similarity where respondent’s <.finance> gTLD was related to the complainant’s registered trademark).
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent does not identify itself as CBOE or anything related to such a term, but rather the now-revealed WHOIS information identifies the Respondent as “yang zhi.” Complainant argues thus, there is no basis to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii) given Complainant’s widely known rights in the CBOE mark. See Tercent Inc. v. Lee Yi, FA0301000139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant adds that Respondent avails of privacy service to conceal his identity on the published WHOIS.
Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of its CBOE marks in the disputed domain name, and moreover Complainant is unaware of any legitimate companies in the financial services industry doing business under any similar name. To the contrary, Complainant contends that Respondent trades on the goodwill of Complainants’ trademark, purposely creating consumer confusion in a manner allowing Respondent to prey on individuals when they mistakenly believe that the disputed domain name is associated with Complainant.
Complainant contends that even if Respondent were legitimately offering financial services under the disputed domain name, arguing that this would still not evidence rights or legitimate interests in the disputed domain name and that panels have repeatedly found that competing services using confusing domain names violates Policy ¶ 4(c)(ii). See HDR Global Trading Limited v. Sam Ben, FA1910001866208 (Forum Nov. 5, 2019) (finding respondent’s use of complainant’s BITMEX mark for competing cryptocurrency services did not constitute a bona fide offering of goods or services).
Complainant adds that in this instance, the use of such the confusingly similar domain name in connection with competing services is not a bona fide, noncommercial or fair use. See Alcon, Inc. v. ARanked, FA1002001306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that the disputed domain name was registered and is being used in bad faith, submitting that Respondent had constructive and likely actual notice of the CBOE marks. 15 U.S.C. § 1072; Barney’s Inc. v. BNY Bulletin Board, No. D2000-0059 (WIPO 2000) (“Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant’s rights in its trademark.”).
Complainant refers to screen captures of its own website at <www.cboe.com>, and the website which the disputed domain name resolves which it has exhibited in an annex to the Complaint. Complainant submits that these show that Complainant’s own website provides its well-established securities and derivatives exchange for trading and the website to which the disputed domain name resolves purports to provide the same or similar services in an attempt to hold itself out as a financial trading platform to impersonate Complainant.
Complainant submits that such use of Complainant’s marks in connection with competing, or more likely fraudulent, financial services indicates Respondent’s actual knowledge of Complainant and is an attempt in bad faith by Respondent to attract, for commercial gain, consumers to his website and applications by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant adds that bad faith is further evidenced by Respondent having affirmatively concealed his true identity by means of a proxy service and argues that, considered in light of Respondent’s illegitimate selection and use of the disputed domain name, this supports the inference that Respondent has knowingly engaged in the registration and use of the disputed domain name in bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Prot. Serv., Inc., D2004-0453 (WIPO 2004) (“Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is yet another example of bad faith conduct.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides financial services, specifically a securities and derivatives exchange using the CBOE mark for which it owns the following service mark registrations.
· United States registered service mark CBOE, registration number 2, 484,436, registered on the Principal Register on September 4, 2001, for goods in international class 36.
· United States registered service mark CBOE (and device), registration number 5,613,242, registered on the Principal Register on November 20, 2018 for services in international class 36.
Complainant has an established Internet presence and maintains its primary website at <www.cboe.com>. Complainant’s domain name <cboe.com> was registered on August 8, 1994.
The disputed domain name was registered on October 8, 2021 and resolves to a website which purports inter alia to be “[t]he world's leading cryptocurrency index contract transaction platform”.
There is no information available about Respondent except for that which is in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name.
The information provided by the Registrar confirms that Respondent, who has avails of a privacy service to conceal his identity on the published WHOIS, is the registrant of the disputed domain name.
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”).
Complainant has provided clear, convincing, and uncontested evidence of its rights in the CBOE mark established through its ownership of the United States service mark registrations described above, and its international use of the CBOE mark, by itself and its affiliated entities, in its securities and derivatives exchange business in numerous jurisdictions across the world, including on the Internet trading platform at <www.cboe.com>.
The disputed domain name <cboe.finance>, consists of Complainant’s CBOE mark in its entirety with no additions or changes, in combination with the gTLD suffix <.finance>.
This Panel finds that the disputed domain name is both identical, and confusingly similar to Complainant’s CBOE mark, as an Internet user would either consider the gTLD suffix as a necessary element in a domain name or else consider the term <.finance> as being descriptive of Complainant’s services.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or the judgement interests in the disputed domain name arguing that
· Respondent does not identify itself as CBOE or anything related to such a term, but avails of privacy service to conceal his identity on the published WHOIS and the now-revealed WHOIS information identifies the Respondent as “yang zhi”;
· there is no basis to find that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
· the disputed domain name is identical to the CBOE mark in which Complainant has widely known rights;
· Complainant has not authorized, licensed, or endorsed Respondent’s use of its CBOE marks in the disputed domain name;
· Complainant is unaware of any legitimate companies in the financial services industry doing business under any similar name;
· Respondent is trading on the goodwill of Complainants’ trademark, purposely creating consumer confusion in a manner allowing Respondent to prey on individuals when they mistakenly believe the is associated with Complainant;
· even if Respondent were legitimately offering financial services under the disputed domain name, this would still not evidence rights or legitimate interests in the domain as panels established under the Policy have repeatedly found that using a domain name that is confusingly similar to a complainant’s mark to purport to offer competing services violates Policy ¶ 4(c)(ii);
· the screen capture of the website to which the disputed domain name resolves show that Respondent is using the disputed domain name that it identical to its CBOE mark in order to offer competing services and confuse Internet users and such use cannot be considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that the Complainant has proven on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name consists of Complainant’s CBOE mark in its entirety with no additions or changes, in combination with the gTLD suffix. The gTLD <.finance> is directly relevant to and descriptive of, financial services which is an industry in which Complainant operates. The combination of the letters CBOE have no apparent meaning other than as Complainant’s service mark. Taken in combination therefore these factors show that the registrant of the disputed domain name was aware of Complainant, its mark, business, and website, when the disputed domain name and was chosen.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith, with Complainant’s mark in mind in order to take predatory advantage of Complainant, its goodwill and reputation and to present the opportunity to confuse Internet users. In reaching this conclusion, this Panel notes that the registrant intentionally chose to register the disputed domain name on the descriptive <.finance> gTLD and that the evidence adduced shows that the disputed domain name is being used to impersonate Complainant, purporting to offer competing financial services.
The screen captures the website which the disputed domain name resolves, adduced in evidence in the annex to the Complaint, shows that Respondent is purporting to offer services similar to those offered by Complainant on its trading platform.
Complainant has a highly developed trading platform with its CBOE trademark prominently displayed in the banner on the home page and throughout the site.
Respondent’s website also gives at least the initial impression that it is highly developed. It prominently displays the letters “CBO” in the banner of the home page, purporting to offer a “[p]owerful trading performance, seamless trading experience”, and to be “[t]he world’s leading cryptocurrency index contract transaction platform”. Worryingly, given the evidence that these claims are false, Respondent’s website offers downloads of android and IOS apps.
This Panel has no hesitation finding that on the balance of probabilities the disputed domain name is being used in bad faith to confuse, mislead and misdirect Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant's CBOE mark as to the source, sponsorship, affiliation or endorsement of the web site or services.
As this Panel has found that the disputed domain name was registered and is being used in bad faith. Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the remedy sought in the Complaint.
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.finance> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 18, 2021
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