Cboe Global Markets, Inc. and Eris Digital Holdings, LLC v. xds / ank
Claim Number: FA2301002028292
Complainant is Cboe Global Markets, Inc. and Eris Digital Holdings, LLC (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is xds / ank (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <erisxxds.com> and <erisxank.com> (the “disputed domain names”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on January 19, 2023; Forum received payment on January 19, 2023.
On January 21, 2023, the Registrar confirmed by e-mail to Forum that the <erisxxds.com> and <erisxank.com> disputed domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the disputed domain names. The Registrar 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 January 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@erisxxds.com, postmaster@erisxank.com. Also on January 24, 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 February 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all disputed domain names listed in the Complaint.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this case: Cboe Global Markets, Inc. and Eris Digital Holdings. LLC. Complainants claim that they have standing to file a joint Complaint since Complainant Eris Digital Holdings, LLC is a wholly owned subsidiary of Complainant Cboe Global Markets, Inc. Since the Panel accepts that the evidence in the Complaint is sufficient to establish a nexus or link between the Complainants, the Panel treats the Complainants as a single entity in this proceeding. Thus, throughout this decision, the Complainants will hereinafter be collectively referred to as “Complainant.”
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the Respondent entities which control the disputed domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases and therefore, are appropriate Respondents in this proceeding. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Here, in addition to common control, the Panel finds that the disputed domain names utilize the same Registrar, the same nameserver provider, the same address and phone number, and both were registered within weeks of each other. Further, the disputed domain names resolve to identical webpages. Thus, the Panel finds that the use of multiple respondents is appropriate in this case.
A. Complainant
Complainant Cboe Global Markets, Inc. provides some of the most highly-regarded securities and derivatives exchanges throughout the world. Through its acquisitions and subsidiaries, Complainant Cboe Global Markets, Inc. offers trading across a diverse range of products in multiple asset classes and geographies, including options, futures, United States and European equities, exchange-traded products, and global foreign exchange. Complainant Cboe Global Markets, Inc. offers its trading and investment products internationally.
Complainant Eris Digital Holdings, LLC provides financial services, including, for example, the trade, clearance, or exchange of digital assets. In May 2022, Complainant Eris Digital Holdings, LLC was acquired by Complainant Cboe Global Markets, Inc and has been integrated into its core business.
Complainant contends that it has rights in the ERISX trademark through numerous trademark registrations, including registrations in the United States, through the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 6,126,512, registered on August 11, 2020, in international classes 36, 42, and 45). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). In addition, Complainant has rights in the ERISX Mark in numerous other jurisdictions worldwide, including in Hong Kong, where the Respondent resides (e.g., Hong Kong Registration No. 304855393, in International Classes 9, 36, and 42). Complainant provides evidence of registration of the ERISX Mark with the USPTO and jurisdictions worldwide, and therefore, Complainant claims that it has trademark rights in the ERISX Mark.
Complainant claims that Respondent’s <erisxxds.com> and <erisxank.com> disputed domain names are confusingly similar to the ERISX Mark as they incorporate the entirety of the trademark while merely adding random letters, followed by the generic top-level domain (“gTLD”) “.com”. Complainant also contends that Respondent lacks rights or legitimate interests in the <erisxxds.com> and <erisxank.com> disputed domain names since Respondent is not licensed, authorized, or otherwise permitted to use Complainant’s ERISX Mark and is not commonly known by the disputed domain names. Finally, Complainant asserts that Respondent registered and is using the <erisxxds.com> and <erisxank.com> disputed domain names in bad faith by impersonating Complainant to confuse users in furtherance of a phishing scheme, thereby attracting users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the ERISX Mark as described above. The Panel also finds that the disputed domain names are confusingly similar to the Complainant’s ERISX Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
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 disputed domain names should be cancelled or transferred:
(1) the disputed domain names 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 disputed domain names; and
(3) the disputed domain names have been registered and are 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 Panel finds that the disputed domain names are confusingly similar to the ERIXS Mark as set forth below.
First, Complainant has rights in the ERISX Mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Registration No. United States Registration No. 6,126,512, registered on August 11, 2020, in international classes 36, 42, and 45). Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Since Complainant provides evidence of its registration of the ERISX Mark with numerous trademark offices worldwide, the Panel finds that Complainant has sufficiently established rights in the mark per Policy paragraph 4(a)(i).
Second, the Panel agrees with Complainant that the <erisxxds.com> and <erisxank.com> disputed domain names are confusingly similar to the ERISX Mark. When a disputed domain name wholly incorporates another’s mark, Panels have found that additional letters do not defeat a finding of confusing similarity. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the domain name from Complainant’s mark.”). Similarly, gTLDs are irrelevant for purposes of a Policy paragraph 4(a)(i) analysis. The disputed domain names include the ERISX Mark in its entirety and then simply add random letters (“xds” and “ank”), followed by the “.com” gTLD. Given that Respondent’s disputed domain names merely add random letters and a gTLD to the ERISX Mark, the Panel concludes they are confusingly similar to Complainant’s ERISX Mark under Policy paragraph 4(a)(i).
Confusing similarity is also found where the resolving webpage conspicuously displays Complainant’s ERISX Mark and trades off the Complainant’s goodwill. See E*Trade Financial Holdings, LLC v. Alex Given, FA2205001994893 (Forum June 3, 2022) (finding confusing similarity where the resolving webpage displays Complainant’s mark and trades off the Complainant’s goodwill).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the ERISX Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain names when a respondent diverts traffic to a site that imitates and competes with the complainant. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017). Even if Respondent were legitimately offering financial services on the websites to which the disputed domain names resolve, this would still not demonstrate rights or legitimate interests in the disputed domain names. Panels have repeatedly found that competing services using confusing disputed domain names violate Policy paragraph 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).
In short, there is no evidence that Respondent is using or is planning to use the disputed domain names for a bona fide offering of goods or services, nor is Respondent commonly known by the disputed domain names or is making any legitimate noncommercial or fair use of the disputed domain names. Accordingly, the Panel concludes that Respondent cannot establish any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s websites or online locations by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds that Respondent registered and is using the disputed domain names in bad faith because Respondent is using its websites as a fraudulent phishing scheme to collect unsuspecting users’ personal information. Per Policy paragraph 4(a)(iii), using disputed domain names to phish for users’ personal information is considered evidence of bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses to fraudulently phish for information. Thus, the Panel concludes that Respondent phishes for confidential information and does so in bad faith under Policy paragraph 4(a)(iii).”).
Third, the Panel finds evidence of bad faith disruption of Complainant’s business under Policy paragraph 4(b)(iii), as well as an attempt to attract users for commercial gain under Policy paragraph 4(b)(iv). Here, Respondent uses the disputed domain names to pass itself off as Complainant and to deceive Internet users into believing that they have reached Complainant’s website or is otherwise affiliated or associated with Complainant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017). Moreover, Respondent’s unauthorized use of Complainant’s ERISX Mark and logo for websites that purport to provide the same or similar services as does Complainant is an attempt by Respondent to impersonate Complainant, and likely receive Complainant’s customers’ information and money. The websites include a login page where Respondent presumably is scraping users’ password information. As noted above, Complainant operates a securities and derivatives exchange for trading, and Respondent’s websites use Complainant’s name and logo and holds itself out as a cybercurrency trading platform, constituting bad faith.
Finally, the Panel finds that Respondent registered and used the disputed domain names in bad faith because Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the ERISX Mark. Actual knowledge of a complainant’s mark prior to registering disputed domain names is sufficient to establish bad faith under Policy paragraph 4(a)(iii). It strains credulity to think that Respondent did not have actual knowledge of Complainant’s ERISX Mark. Prior knowledge of a complainant’s trademark and use of disputed domain names that incorporate the trademark is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s mark at the time of registration).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <erisxxds.com> and <erisxank.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 3, 2023
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