DECISION

 

Cboe Exchange, Inc. v. Zhouyongshe

Claim Number: FA2309002064089

 

PARTIES

Complainant is Cboe Exchange, Inc. ("Complainant"), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Zhouyongshe ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cboeint.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 29, 2023; Forum received payment on September 29, 2023.

 

On October 6, 2023, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to Forum that the <cboeint.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 October 16, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of November 6, 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@cboeint.com. Also on October 16, 2023, the Chinese and English 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 in Chinese and English.

 

On November 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

Paragraph 11(a) of the Rules provides that "the language of the administrative proceeding shall be the language of the Registration Agreement. That language is Chinese, but Complainant petitions the Panel to continue the proceedings in English. It states that "[t]he domain name itself includes English characters and words, and the original resulting webpage was in English."  This is assumed by the Panel to imply that Respondent has a sufficient facility in English to take part in the proceedings and competently file a Response if it so chose.

 

Whether that is the case or not, the Panel observes that paragraph 11(a) is qualified, stating that it is "subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding" (added emphasis). Given this broad power I am inclined to find that the proceedings should continue in English, notwithstanding that Chinese is otherwise the correct language.

 

As stated above, notification of the Complainant was provided to Respondent in Chinese as well as English. The evidence of bad faith which follows and the fact that Respondent has shown no sign of defending its position inclines the Panel to take the view that it is an unnecessary burden for the Complaint to be translated into Chinese and the proceedings recommenced.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in CBOE. Complainant holds a national registration for that trademark.  Complainant submits that the domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used other than for a nefarious purpose.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant uses the CBOE trademark in connection with its business of exchange-traded stock options;

2.       Complainant is the owner of United States Patent & Trademark Office ("USPTO") Reg. No. 2,484,436, registered September 4, 2001, for the trademark, CBOE;

3.       the disputed domain name was registered on March 8, 2023, using a privacy service to shield the name of Respondent; and

4.       Respondent disclosed by the Registrar is not currently using the disputed domain name, which until recently, resolved to a website using the trademark and a logo-iteration thereof used by Complainant, promoting itself as a financial/cryptocurrency trading platform.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

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 the trademark CBOE with the USPTO, a national trademark authority.   

 

The disputed domain name is confusingly similar to Complainant's trademark.  For the purposes of comparison, the gTLD, ".com", can be disregarded. So, too, the Panel finds that the addition of the known abbreviation for "international" (int) is of no distinguishing value (see, for example, Assurant, Inc. v. Host Master, FA 2025475 (Forum Jan. 19, 2022) finding the compared terms confusingly similar where the domain name wholly incorporated the subject mark and only added the generic term "int" and an irrelevant punctuation mark such as a hyphen); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): "Where a relevant trademark is recognisable 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.").

 

Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

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 name, 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 name of Respondent was shielded by a privacy service. Once revealed in consequence of these proceedings as a common Chinese female forename, nothing indicated that Respondent might be commonly known by the domain name (see, for example, 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.").

 

There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  Further, the use of the domain name is clearly in bad faith and cannot give rise to any rights or legitimate interests. In particular, no rights or legitimate interests can accrue by reason of use of the domain name to resolve to a website offering essentially competitive services (see, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute 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).";

Alcon, Inc. v. ARanked, FA 1306493 (Forum March 18, 2010): "The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").

 

A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was 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.'

 

The Panel finds that Respondent's recent use of the domain name falls squarely under paragraph 4(a)(iv) above. The domain name has already been found confusingly similar to the trademark. The resolving website existed for commercial gain. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website.

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cboeint.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  November 8, 2023