Cboe Exchange, Inc. v. main main / main
Claim Number: FA2206002001707
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 <cboeep.com>, <cboepws.com> and <cboebiz.com>, registered with 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2022; the Forum received payment on June 23, 2022.
On June 27, 2022, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <cboeep.com>, <cboepws.com>, and <cboebiz.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the 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 July 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@cboeep.com, postmaster@cboepws.com, postmaster@cboebiz.com. Also on July 5, 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 28, 2022, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not registered to one holder. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant has alleged that the disputed domain names are effectively controlled by a single person or entity, operating under several aliases.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
The Complainant points to commonalities shared by the registrations and to other factors which, taken together, provide compelling evidence of Complainant’s assertion of a single controlling entity behind the disputed domain names and underpin the Panel’s finding that these proceedings should continue against the named respondents, hereinafter referring to them as “Respondent”.
A. Complainant
Complainant asserts trademark rights in CBOE. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
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 is located in Chicago and provides an options exchange under the trademark, CBOE (from “Chicago Board Options Exchange”);
2. the trademark is registered with the United States Patent & Trademark Office (“USPTO”) as, inter alia, Reg. No. 2,484,436, registered on Sep. 4, 2001;
3. the <cboeep.com> domain name was registered on May 2, 2022, and resolves to a website that passes itself off as that of, or at least connected with, Complainant’s business; the website solicits users’ confidential information;
4. the <cboebiz.com> domain name was registered on June 11, 2022, and resolves to essentially the same website as the <cboeep.com> domain name;
5. the <cboepws.com> domain name was registered on June 12, 2022, and is not in use; and
6. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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 CBOE with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark, the gTLD “.com” can in each case be disregarded (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)). That aside, the disputed domain names take the trademark to which they add the letters, “biz”, “ep” or “pws”.
The Panel finds that Internet users would understand “biz” as a common shortening of the word “business”, not least since “.biz” is the well-established gTLD for registration of domains used by businesses. The Panel finds the <cboebiz.com> domain name to be confusingly similar to Complainant’s trademark (see, for example, Digi-Key Corporation v. Paul Potts / Peter A. Paulsen / David Craig / Henry Cavill / David Bowie, FA1101001370361 (Forum March 18, 2011) finding <digikeybiz.com> confusingly similar to “DIGI-KEY”).
However, the argument of confusing similarity in the cases of the <cboeep.com> and <cboepws.com> domain names is less convincing. The Complaint submits that those domain names take the trademark and “merely add the additional random letters “ep” and “pws” respectively, which do not sufficiently distinguish the Disputed Domain Name.” Further, in the case of the <cboeep.com> domain name, the Complaint states that “[t]his is especially true when considering the unauthorized use of Complainant’s CBOE name and registered CBOE logo mark on the associated [webpage for <cboeep.com>], as well as an ‘About Cboe’ section that describes Complainant’s Cboe Global Markets company”.
The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) and, in particular, to those paragraphs set out hereunder which ask:
1.7 What is the test for identity or confusing similarity under the first element?
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element).
Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.
1.15 Is the content of the website associated with a domain name relevant in determining identity or confusing similarity?
The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.
In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.
Such content will often also bear on assessment of the second and third elements, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.
Following that consensus of opinion, the Panel has put to one side “the strength of the complainant’s mark” to the extent that this means its public reputation and relied only on its inherent distinctiveness which the Panel would characterise as relatively high.
When the trademark is coupled with other integers the comparison should then take account of how that added matter impacts on the trademark. So, for example, in The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) the panel said that “slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).” More generally, in Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018), the panel said that “[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”
Here, there is no indication that either “EP” or “PWS” has significance in the context of Complainant’s business. The Panel from its own enquires notes that “EP” could stand for “economic profit” and that “PWS” could stand for partner website but those meanings are far from unique and the Panel accepts the submission that the letters are without significance (“random” or “meaningless”).
The Complaint cites the case of Brooks Sports, Inc. v. chen jiajin, FA 101001930406 (Forum March 30, 2021) as authority for the general proposition that adding random letters to a trademark does not distinguish a disputed domain name from that trademark. However, that case did not involve the addition of random letters. The at-issue domain name, <brooswfa> was found to be confusingly similar to compainant’s BROOKS trademark. The panel reasoned that:
“the disputed domain name starts with “broos”, which seems to be a misspelled version of Complainant’s trademark BROOKS, just deleting the letter “K”. The final letter combination “wfa” stands out as an acronym, rather than a word or natural ending “broos”. The Panel further note that WFA is the well-known acronym for Women’s Football Alliance.
By adding that acronym to the word “broos”, the Respondent has indicated an activity connected to the Complainant’s goods and trademark BROOKS – with or without any misspelling – rather than creating an independent domain name.”
Whatever else might be thought of that reasoning, it nonetheless underscores the point that the weight and influence of the added matter requires consideration. The Complaint also cites Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) which found, without explanation, that <bittrexbtc.com> was confusing similar to complainant’s BITTREX mark. To make sense of the decision it has to be assumed that the panelist belongs to that camp which takes account of the reputation of a mark when considering Policy ¶4(a)(i), and/or, regarded the letters “BTC” to be well understood as the abbreviation for “Bitcoin” and therefore a wholly non-distinctive addition to the trademark which was then recognisable on its own.
The ambivalence with which UDRP panelists have approached reputation for the purposes of Policy ¶4(a)(i) is still largely unresolved and is exemplified by two relatively recent cases (not cited in the Complaint) in which Complainant was involved in which the panel found the relevant terms to be confusing similar. In Cboe Exchange, Inc. v. tou Guang, FA 2202001983794 (Forum March 17, 2022) the domain name at issue was <cboex-u.com> and in Cboe Exchange, Inc. v. WU ANDY, FA 2109001963286 (Forum October 13, 2021) the domain names at issue were <cboex.com> and <cboex.global>. In neither case was the reasoning explicit but this Panel has little doubt that those decisions regarded “ex” or “ex-u” as the additions to the trademark. The alternative – that the added matter was “x” or “x-u” – seems counter-intuitive. The additions are likey to be perceived as abbreviations of either “exchange” or “exchange you”, and the elision of “ex” with the trademark by omission of the additional “e” brings the trademark to mind, were it not already so. The panelists thus can be assumed to have taken the reputation of the trademark into account.
None of this assists Complainant here with respect to the <cboeep.com> domain name. Stripped of its gTLD, the comparison is of the trademark, CBOE, with cboeep. The Panel has applied “a reasoned but relatively straightforward comparison” of those terms and made a “side-by-side comparison of the domain name and the … trademark to assess whether the mark is recognizable within the disputed domain name. The Panel finds that it is not. As admitted, the letters “ep” are random and meaningless. The Panel finds that the repetition of the letter “e” results in what would most likely to seen as an unknown but complete term of some kind; one – to the point – where the trademark is obfuscated. Finally, this Panel follows the WIPO Overview para. 1.15 position that, for the purposes of Policy ¶ 4(a)(i), website content is irrelevant.
A thin line separates the <cboepws.com> domain name. The Panel finds that the very meaninglessness of the letters “pws” and the resultant collision of letters, cboepws, leaves open the possibility of separate perception of the trademark.
Noting with agreement the observation in the WIPO Overview that some cases entail a more holistic aural or phonetic comparison of the trademark and the disputed domain name, the Panel finds on balance that the <cboeep.com> domain name is not deceptively similar to Complainant’s trademark, but that the <cboepws.com> domain name is deceptively similar to that trademark.
Accordingly, Complainant has established the first element of the Policy with respect to the <cboebiz.com> and <cboepws.com> domain names.
It follows that the Complaint fails with respect to the <cboeep.com> domain name (see, for example, Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 names of the underlying domain name holders (Respondent) do not provide any indication that Respondent might be commonly known by either of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
As stated above, the evidence is that the <cboepws.com> domain name is not in use and that the <cboebiz.com> domain name resolves to a website that uses Complainant’s registered trademark and a logo-style iteration thereof (also registered) and other statements and indicia all intended to deceive Internet users into the belief that the resolving site is associated with Complainant’s business under the trademark.
Clearly, neither domain name is supported by rights or legitimate interests – in one case there is no use at all which might do so, and in the other the use is manifestly illegitimate (see, for example Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”); Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests in either domain name and so finds that Complainant has satisfied the second limb of the Policy with respect to both.
Complainant must prove on the balance of probabilities both that the 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.’
With respect to the <cboebiz.com> domain name, the Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving website phishes for confidential, financially sensitive, information. The Panel finds that the website exists for commercial gain in some way or another, the exact mode not requiring proof. In terms of the Policy, the Panel finds that Respondent has intentionally used the <cboebiz.com> domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of that website. The Panel finds that Complainant has satisfied the third and final element of the Policy with respect to the <cboebiz.com> domain name.
The <cboepws.com> domain name has not been used and, critically, there are no submissions in relation to that matter. As indicated, the Policy requires proof of registration and use in bad faith. Complainant must successfully argue that one of the above scenarios applies to the unused name, or that the non-use constitutes so-called “passive holding” in bad faith. Complainant has attempted neither and so the Panel must find that the Complaint has not been established with respect to the <cboepws.com> domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in relation to the <cboebiz.com> domain name and so it is Ordered that <cboebiz.com> be TRANSFERRED from Respondent to Complainant.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in relation to the <cboeep.com> and <cboepws.com> domain names and so it is Ordered that <cboeep.com> and <cboepws.com> REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 1, 2022
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