DECISION

 

Cboe Exchange, Inc. v. lar frank

Claim Number: FA2403002089243

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coincboe.com>, ('the Domain Name') registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 19, 2024; Forum received payment on March 19, 2024.

 

On March 20, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <coincboe.com> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2024 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@coincboe.com. Also on March 26, 2024, 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 April 16, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the CBOE mark, registered, inter alia, in the United States for financial services with first use recorded as 1972.

 

The Domain Name registered in 2024 is confusingly similar to Complainant's trademark adding only the generic term 'coin' and the gTLD .com which do not prevent the said confusing similarity.

 

Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by Complainant.

 

The Domain Name has been used for a page appearing to be an official site of the Complainant using its CBOE mark in its masthead complete with a log in screen. This is phishing and does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith diverting Internet users for commercial gain and disrupting Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of the CBOE mark, registered, inter alia, in the United States for financial services with first use recorded as 1972.

 

The Domain Name registered in 2024 has been used for a site purporting to offer competing financial services using Complainant's mark in its masthead and a log in screen.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.").

 

Identical and/or Confusingly Similar

The Domain Name consists of Complainant's CBOE mark (which is registered, inter alia, in the USA for financial services with first use recorded as 1972), the generic term 'coin' and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant). The addition of the generic term 'coin' does not prevent confusing similarity between the Domain Name and Complainant's mark.

 

A gTLD does not serve to distinguish a domain name from a Complainant's mark. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel holds that the addition of the gTLD .com does not prevent confusing similarity between Complainant's mark and the Domain Name.

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

Complainant has not authorised the use of its mark. There is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The website attached to the Domain Name has been used for a page appearing to be an official site of Complainant using Complainant's mark in its masthead and a log in screen. The site appears to be gathering information for phishing purposes. Under Policy 4(c)(i) and (iii), the use of a disputed domain name in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).").

 

Respondent has not answered this Complaint or rebutted the prima facie case evidenced by Complainant as set out herein.

 

As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Respondent uses the Domain Name to engage in apparent phishing. The use of a disputed domain name in furtherance of a phishing scheme is considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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 that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).");

 

The use of Complainant's mark in the masthead of Respondent's phishing website and the use of that mark to purport to offer services in the same field as Complainant shows Respondent has actual knowledge of Complainant, its rights, business and services.

 

Respondent has used a domain name that is confusingly similar to Complainant's mark which has a reputation for financial and investment services industries to attract Internet users to its website for commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The conduct also disrupts Complainant's business. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (finding that respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)).

 

As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).

 

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 <coincboe.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: April 16, 2024