Cboe Exchange, Inc. v. cboe cboe
Claim Number: FA2212002025701
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania. Respondent is cboe cboe (“Respondent”), HK.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cboe.me> and <cboe.bet>, registered with GoDaddy.com, LLC.
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 Forum electronically on December 29, 2022; Forum received payment on December 29, 2022.
On December 30, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <cboe.me> and <cboe.bet> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2023 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.me, postmaster@cboe.bet. Also on January 4, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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., offers securities and derivatives exchanges.
Complainant has rights in the CBOE mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <cboe.me> and <cboe.bet> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety while adding the “.me” country-code top-level domain (“ccTLD”) or the “.bet” top-level domain (“TLD”).
Respondent lacks rights and legitimate interests in the <cboe.me> and <cboe.bet> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its CBOE mark in the domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant while trading off of its goodwill and offering competing services.
Respondent registered and uses the <cboe.me> and <cboe.bet> domain names in bad faith. Respondent engages in a pattern of bad faith while disrupting Complainant’s business. Additionally, Respondent passes off as Complainant while attracting users for commercial gain and phishing. Furthermore, Respondent provides false contact information. Finally, Respondent registered the at-issue 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 CBOE.
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 to offer services that compete with services offered by Complainant and to further a phishing scheme designed to collect private data.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for CBOE, as well as any other national trademark registration for such mark, establishes Complainant’s rights in CBOE for the purposes of 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)); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
The at-issue domain names consists of Complainant’s CBOE trademark followed by either the “.me” or the “.bet” top level domain name. The slight difference between Respondent’s domain names and Complainant’s trademark, i.e. the addition of a top-level domain name, is insufficient to distinguish either domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <cboe.me> and <cboe.bet> domain names are each confusingly similar to Complainant’s CBOE trademark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
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).
Respondent lacks both rights and legitimate interests in respect of the 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 legitimate interests in respect of the at‑issue domain names.
WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “Cboe cboe” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either <cboe.me> or <cboe.bet>. The Panel therefore concludes that Respondent is not commonly known by <cboe.me> or <cboe.bet> for the purposes of Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent uses the <cboe.me> and <cboe.bet> domain names to pass itself off as Complainant and address websites displaying Complainant’s trademark, logo and other devices to appear as if they may be Complainant’s genuine websites all while purporting to offer services that compete with those services offered by Complainant. Such use of the confusingly similar domain names is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s <cboe.me> and <cboe.bet> domain names were registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each domain name.
First, Respondent has previously suffered multiple adverse UDRP decisions as the respondent where Complainant was the complainant as wells as other adverse UDRP decisions. Respondent’s pattern of cybersquatting indicates Respondent’s bad faith in the instant dispute pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next, and as mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain name to pass itself off as Complainant and misdirect internet users seeking Complainant to Respondent’s <cboe.me> and <cboe.bet> websites. There, Respondent exploits the goodwill found in Complainant’s trademark by purporting to offer products that compete with Complainant’s offering. Using the <cboe.me> and <cboe.bet> domain names to pass itself off as Complainant to pretend there is an affiliation between Complainant and Respondent is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and 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, Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent also appears to be engaging in phishing. The <cboe.me> and <cboe.bet> websites appear to be used to harvest visiting internet users’ personal private data. The websites display a login page where visitors, believing they are dealing with Complainant, are deceived into presenting private data, such as logon credentials, to Respondent. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of internet users through a confusingly similar domain name).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CBOE mark when it registered <cboe.me> and <cboe.bet> as a domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s prior UDRP decisions favoring Complainant; as well as from Respondent’s passing itself off as Complainant via the domain names as discussed elsewhere here. Respondent’s registration and use of <cboe.me> and <cboe.bet> with knowledge of Complainant’s rights in CBOE name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also, 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").
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.me> and <cboe.bet> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 29, 2023
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