Cboe Exchange, Inc. v. INTERNET DATA
Claim Number: FA2301002028738
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania. Respondent is INTERNET DATA (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboeforex.cc>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 23, 2023; Forum received payment on January 23, 2023.
On Jan 26, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <cboeforex.cc> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. 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 January 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@cboeforex.cc. Also on January 31, 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 26, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Cboe Exchange, Inc. offers financial services.
Complainant asserts rights in the CBOE mark based upon its registration of such mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <cboeforex.cc> is identical or confusingly similar to Complainant’s CBOE trademark as it incorporates the CBOE mark in its entirety and adds the descriptive term “forex” as well as the “.cc” country code top-level domain (“ccTLD”) to form.
Respondent lacks rights or legitimate interests in the <cboeforex.cc>
domain name. Respondent is not licensed or authorized to use Complainant’s CBOE mark and is not commonly known by the at-issue domain name. Respondent
also does not use the domain name for any bona fide offering of goods or
services or legitimate noncommercial or fair use. Rather, Respondent
uses the at-issue domain name to purport to offer competing services with a
false impression of association with complainant.
Respondent registered and uses the <cboeforex.cc> domain name in bad faith. Respondent uses the at-issue domain name in order to pass off as Complainant and offer competing goods and services. Respondent’s bad faith may be further demonstrated by its use of a privacy service in the domain name’s WHOIS information. Further, Respondent uses the at-issue domain name to effectuate a phishing scheme. Finally, Respondent had both constructive and actual notice of Complainant’s rights in the CBOE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CBOE trademark.
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 name after Complainant acquired rights in the CBOE trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant, offer competing services, and facilitate phishing.
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 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 name consists of Complainant’s CBOE trademark followed by the suggestive term “forex,” an abbreviation for “foreign exchange,” with all followed by the “.cc” top level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <cboeforex.cc> domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <cboeforex.cc> domain name is confusingly similar to Complainant’s CBOE trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.)
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). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
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 name.
The WHOIS information for <cboeforex.cc> ultimately reveals that “INTERNET DATA” is the domain name’s registrant and there is nothing in the record that shows that Respondent is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by <cboeforex.cc> under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent uses the <cboeforex.cc> domain name to pass itself off as Complainant and address a website displaying Complainant’s trademark and logo. There, Respondent purports to offer services that compete with Complainant’s offering. Such use of the domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under 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.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <cboeforex.cc> domain name was registered and used in bad faith. As discussed below without being exhaustive, 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.
First 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 <cboeforex.cc> website. The website displays Complainant’s trademark and logo and Respondent further exploits the goodwill found in Complainant’s trademark by purporting to offer financial services that compete with Complainant’s offering. Using the <cboeforex.cc> domain name to pass itself off as Complainant to feign 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).
Respondent also appears to be engaging in phishing. The <cboeforex.cc> website which is falsely holding itself out as being sponsored by Complainant presents a login page that Respondent may use to harvest internet users’ personal private data. Respondent’s malicious impersonation of Complainant may also be used by Respondent to prey on <cboeforex.cc> website visitor via an array of other fraudulent activities. 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 <cboeforex.cc> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s inclusion of the suggestive term “forex” in the at-issue domain name; and from Respondent’s use of Complainant’s unique trademark and logo on the <cboeforex.cc> website, a website purporting to offer services competing with Complainant’s own services. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s rights in CBOE and thus in <cboeforex.cc> 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 <cboeforex.cc> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 27, 2023
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