Cboe Exchange, Inc. v. plum Bruce / Nasdaq
Claim Number: FA2207002006247
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is plum Bruce / Nasdaq (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cboecoins.com> and <cboeotxs.com>, registered with Name.com, 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 July 28, 2022; the Forum received payment on July 28, 2022.
On July 31, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <cboecoins.com> and <cboeotxs.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@cboecoins.com, postmaster@cboeotxs.com. Also on August 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 August 30, 2022, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CBOE service mark established by its ownership of the service mark registrations described below and its use of the mark in its financial services business.
Complainant alleges that the disputed domain names are confusingly similar to the CBOE mark.
Complainant submits that the disputed domain name <cboecoins.com> fully incorporates Complainant’s mark and merely adds the descriptive financial and cryptocurrency term “coins,” which does not distinguish the disputed domain name. See Snap Inc. v. Dylan Kerler, FA2201001979960 (Forum Feb. 11, 2022) (finding the addition of the generic term “coin” to Complainant’s mark does not distinguish the domain name at issue).
And Complainant adds that the disputed domain name <cboeotxs.com> also fully incorporates Complainant’s mark, merely adding the random letters “otxs,” which does not sufficiently distinguish the disputed domain name. See Brooks Sports, Inc. v. chen jiajin, FA 101001930406 (Forum Mar. 30, 2021) (finding that “adding random letters and a gTLD…fails to sufficiently distinguish a disputed domain name).
Complainant further argues that the generic top-level domain (“gTLD”) suffix <.com> in the disputed domain names does not create a meaningful distinction from Complainant’s mark as it is well established under the Policy that “the specific top level of a domain name . . . does not affect the determination of the identity or similarity between a domain name and a trade mark.” Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc., DTV2008-0010 (WIPO Sept. 17, 2008).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain names, arguing that Respondent, as registrant, does not identify itself as CBOE, CBOECOINS, CBOEOTXS, or anything related to such terms, but rather, the WHOIS information in each case, identifies Respondent as “Plum Bruce.”
Further, the WHOIS information lists Respondent’s organization as “Nasdaq”, which is a Securities and Exchanges company competing with Complainant. Thus, there is no basis to find that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii) given Complainant’s widely known rights in the CBOE mark, and the fact that the WHOIS information lists the Respondent’s organization specifically as a competing company. See Tercent Inc. v. Lee Yi, FA 0139720 (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).
Furthermore, Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of its CBOE mark in the disputed domain names.
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’ service mark, purposely creating consumer confusion in a manner allowing Respondent to prey on individuals when they mistakenly believe that the disputed domain names are associated with Complainant.
Complainant adds that even if Respondent were legitimately offering financial services under the disputed domain names, this would still not evidence rights or legitimate interests as panels established under the Policy 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).
Referring to screen captures of the identical websites to which both of the disputed domain names resolve, which are exhibited in an annex to the Complaint, Complainant alleges that Respondent is attempting to deceive Internet users by inferring an association or affiliation between the disputed domain names and their resolving websites, and Complainant, by using Complainant’s name, logo and images of Complainant’s trading floor at the top of each of the respective webpages. Past panels have agreed that such use of a domain name at issue or a resolving website to confuse users about the association with a complainant is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
Complainant finally alleges that the disputed domain names were registered and are being used in bad faith arguing that not only had the registrant of the disputed domain names constructive knowledge of Complainant’s rights in the CBOE mark, but bad faith registration is also shown by Respondent’s use of the Complainant’s mark including its United States registered figurative service mark (described below) as a logo, as well as images of Complainant’s trading floor on the websites to which the disputed domain names resolve.
Complainant further argues that a finding by this Panel that Respondent is using the disputed domain names in bad faith is supported by the fact that Respondent has been the subject of adverse decisions under the Policy for previous registration of domain names containing Complainant’s mark. See Cboe Exchange, Inc. v. plum bruce / Nasdaq, FA2202001984496 (Forum Mar. 22, 2022) and Cboe Exchange, Inc. v. plum Bruce / Nasdaq, FA2205001997290 (Forum June 22, 2022). Not only did Respondent register the present disputed domain names promptly following these Forum decisions, but the disputed domain names also land to webpages that are identical to the ones at issue in those proceedings, <cboeex.com> and <cboechange.com> as shown in the copies of the relevant websites exhibited in the Complaint.
Further, Complainant argues that Respondent’s unauthorized use of Complainant’s mark, logo, and pictures of its trading floor for a website that purports to provide the same or similar services to those offered by Complainant is an attempt by Respondent to impersonate Complainant, likely to take Complaint’s customers’ information and money.
Complainant contends that such use in bad faith of Complainant’s marks in connection with competing, or more likely fraudulent, financial services indicates Respondent’s actual knowledge of Complainant and demonstrates attempts by Respondent to attract, for commercial gain, consumers to its websites by creating a likelihood of confusion with 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 Respondent’s use of the disputed domain names in bad faith is also evidenced by the fact that the disputed domain names are used to offer competing products to most likely disrupt Complainant’s business. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Lastly, Complainant contends that Respondent has provided inaccurate or fictitious contact information. The WHOIS information includes an incomplete or non-existent address, as there is no street information provided and Registrant lists “New York City” as the address while stating the country as China.
Further, Complainant asserts that it has found no evidence of someone named “Plum Bruce” in connection with the listed “Nasdaq” company, which is a competing company to Complainant.
Complainant concludes that, Respondent’s illegitimate selection and use of the disputed domain names, supports the inference that Respondent has knowingly engaged in the registration and use of the disputed domain names in bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services, specifically a securities and derivatives exchange, using the service mark CBOE for which it owns a portfolio of service mark registrations including the following:
· United States service mark registration CBOE (figurative), registration number 5,613,242, registered on the Principal Register on November 20, 2018 for services in international class 36;
· United States service mark registration CBOE, registration number 2,484,436 registered on the Principal Register on September 4, 2001 for services in international class 36
Complainant has an established Internet presence and operates its securities and derivatives exchange on web platform at <https://www.cboe.com>. The domain name <cboe.com> is owned by Complainant and was created on August 11, 1994.
The disputed domain name <cboecoins.com> was registered on May 16, 2022, and <cboeotxs.com> was registered on July 1, 2022, Each resolves to an identical website that impersonates Complainant, purporting to offer financial trading services, using Complainant’s CBOE marks including the United States figurative mark registration number 5,613,242 as a logo together with images of Complainant’s trading floor.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar disclosing the name and contact details which Respondent provided as registrant of the disputed domain names.
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 uncontested evidence to prove that on the balance of probabilities it has rights in the CBOE mark, established by its ownership of its portfolio of service mark registrations described above and extensive use of the mark in its financial services business providing a securities and derivatives exchange, including online.
The disputed domain name <cboecoins.com> consists of Complainant’s mark in its entirety in combination with the descriptive term “coins” and no other element except the generic Top Level Domain (“gTLD”) extension <.com>.
The disputed domain name <cboeotxs.com> also fully incorporates Complainant’s mark and merely adds the random letters “otxs” and no other element except the generic Top Level Domain (“gTLD”) extension <.com>.
Neither the additional elements “coins” or “otxs” in the respective disputed domain names add any distinguishing character. The former is a descriptive, generic term and the latter is a meaningless series of four letters.
In the context of this Complaint, the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain names and Complainant’s CBOE mark.
This Panel finds therefore that the disputed domain name <cboecoins.com> and the disputed domain name <cboeotxs.com> are each confusingly similar to the CBOE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
The Complainant has adduced uncontested evidence that it has used the CBOE mark, including on the Internet in the provision of financial services prior to the registration of either of the disputed domain names.
The earliest registration for the CBOE service mark which is relied upon by the Complainant was registered on September 4, 2001, long before the disputed domain names were registered on May 16, 2022, and July 1, 2022
The uncontested evidence is also that in recent years, Complainant has securities and derivatives exchange on web platform at <https://www.cboe.com> and has acquired an international reputation.
The CBOE mark is distinctive and has no obvious meaning except as Complainant’s mark. and the record shows that it is derived from an acronym of “Chicago Board Options Exchange”, so there is no obvious reason as to why either of the disputed domain names might have been chosen and registered, other than to make reference to, and target the goodwill in Complainant’s CBOE mark.
Also given the duration and extent of Complainant’s prior rights and reputation in the CBOE mark, it is implausible that the registrant chose and registered either of the disputed domain names without knowledge of Complainant, its rights and its mark.
Furthermore, Respondent has clearly provided incomplete, contradictory and incorrect details when registering the disputed domain names. In particular, it is implausible that Respondent’s company is known as NASDAQ, as claimed and the address provided is both incomplete and false as New York is not in China.
On the balance of probabilities each of the disputed domain names was chosen and registered to target and take predatory advantage of Complainant’s rights and goodwill in the CBOE mark and so this Panel finds therefore that each of the disputed domain names was registered in bad faith.
The screen captures exhibited in an annex to the Complaint shows that both of the disputed domain names resolve to an identical website on which Respondent presents itself as Complainant, using Complainant’s service marks, logo and images of Complainant’s trading floor. The identical websites provide financial information and purport to offer services identical to those offered by Complainant.
Such intentional use of the disputed domain names in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's CBOE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the competing services purported to be offered on Respondent’s web site constitutes use of the disputed domain names in bad faith for the purposes of the Policy.
As this Panel has found that each of the disputed domain names was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <cboecoins.com> and <cboeotxs.com> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 1, 2022
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