Cboe Exchange, Inc. v. main main / main
Claim Number: FA2206001999970
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is main main / main (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, <cboefis.com>, and <cboerad.com>, registered with Name.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2022; the Forum received payment on June 10, 2022.
On June 13, 2022, Name.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, <cboefis.com>, and <cboerad.com> domain names are registered with Name.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Name.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Name.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com 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 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2022 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@cboeapp.com, postmaster@cboeanc.com, postmaster@cboeidn.com, postmaster@cboelua.com, postmaster@cboefis.com, postmaster@cboerad.com. Also on June 21, 2022, 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 July 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a Chicago-based global financial services company. Complainant claims rights in the CBOE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,484,436 registered September 4, 2001). The disputed domain names <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, <cboefis.com>, and <cboerad.com> (referred to collectively hereafter as “disputed domain names”) are confusingly similar to Complainant’s mark because they incorporate Complainant’s mark in their entireties differing only through the addition of a descriptive term or random letters and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CBOE mark in any way. Additionally, Respondent fails to use the disputed domain names in connection with making a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant to offer fraudulent competing services and products. Complainant further argues that even if Respondent is offering actual services, they do not have legitimate rights in the disputed domain names.
iii) Respondent registered and uses the disputed domains in bad faith. Respondent uses the disputed domains to disrupt Complainant’s business and benefit commercially by causing a likelihood of confusion. Furthermore, Respondent had both constructive and actual knowledge in Complainant’s rights in Complainant’s CBOE mark prior to registration of the disputed domains.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were registered between May 2, 2022 and May 29, 2022.
2. Complainant has established rights in the CBOE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,484,436 registered September 4, 2001).
3. The <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, and <cboefis.com> domain names’ resolving websites display Complainant’s name, exact logo, and information about Complainant’s company while purporting to offer the same or similar services with those actually offered by Complainant.
4. The disputed domain name <cboerad.com> remains inactive.
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 claims rights in the CBOE mark through its registration with the USPTO (e.g., Reg. No. 2,484,436 registered September 4, 2001). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has established rights in the CBOE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark because each of the disputed domain names wholly incorporates Complainant’s mark and differs only insofar as they add a descriptive term or random letters and the “.com” gTLD. The addition of a descriptive term or random letters and a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel notes that the disputed domain name <cboeapp.com> incorporates Complainant’s mark in its entirety and the remaining five disputed domains also wholly incorporate Complainant’s mark and merely add random letters “anc,” “idn,” “lua,” “fis,” and “rad” respectively, which do not sufficiently distinguish the disputed domain names from Complainant’s mark. Therefore, the Panel finds each of the disputed domain names is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by nor identifies itself as any of the disputed domain names nor has Respondent been given license or consent to use Complainant’s CBOE mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domains indicates that Respondent is known by the name “main main.” Nothing in the records rebuts that Respondent was not authorized to use Complainant’s CBOE mark nor was commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by any of the disputed domain names and nor was authorized to use Complainant’s mark per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent has used the five disputed domain names <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, and <cboefis.com> to pass itself off as Complainant. Using a disputed domain name to pass off as a complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (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.”). Complainant has provided the Panel with screenshots of the five disputed domains’ resolving websites displaying Complainant’s mark and logo while purporting to provide the same or similar services to Complainant’s. The Panel notes that the disputed domain name <cboerad.com> remains inactive. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent uses the disputed domain names to pass itself off as Complainant to offer competing goods and services to those of Complainant for commercial benefit. Using a domain name to pass off as a trademark holder and create a likelihood of confusion to offer competing goods and services may demonstrate bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously noted, Complainant provides evidence that Respondent is using the disputed domain names <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, and <cboefis.com> to pass itself off as Complainant. Thus, the Panel finds Respondent’s bad faith registration and use of the five disputed domain names under Policy ¶ 4(b)(iii) and (iv).
The Panel notes that the disputed domain name <cboerad.com> remains inactive. The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant’s advertising budget is substantial. Complainant spent significant time and money advertising and promoting its securities and derivatives exchange goods and services under Complainant’s CBOE mark in multiple trade channels. As a result of Complainant’s significant sales and extensive advertising and promotion over the years, Complainant’s CBOE mark has become well-known;
ii) Respondent is using five other relevant disputed domain names <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, and <cboefis.com> to pass itself off as Complainant; and
iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name <cboerad.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent registered and is using the disputed domain name <cboerad.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboeapp.com>, <cboeanc.com>, <cboeidn.com>, <cboelua.com>, <cboefis.com>, and <cboerad.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 25, 2022
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