DECISION

 

Cboe Exchange, Inc. v. Williams Sonmerfield

Claim Number: FA2502002141253

 

PARTIES

Complainant is Cboe Exchange, Inc. ("Complainant"), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is Williams Sonmerfield ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cboepto.com>, <cboein.com>, <cboetop.com>, <cboeit.com>, <cboeig.com>, and <cboebe.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

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 February 20, 2025; Forum received payment on February 20, 2025.

 

On February 25, 2025, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <cboepto.com>, <cboein.com>, <cboetop.com>, <cboeit.com>, <cboeig.com>, and <cboebe.com> domain names are registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.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 March 3, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2025 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@cboepto.com, postmaster@cboein.com, postmaster@cboetop.com, postmaster@cboeit.com, postmaster@cboeig.com, and postmaster@cboebe.com. Also on March 3, 2025, 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 March 26, 2025, 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in CBOE. Complainant holds a national registration for that trademark.  Complainant submits that the domain names are confusingly similar to its trademark because they "merely add random letters to the CBOE mark".

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by any of the names; and the domain names either have not been used, or have been used for a competitive purpose.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith having targeted Complainant's trademark and 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. 5,613,242, registered November 20, 2018, for a stylized version of the trademark, CBOE;

3.       the disputed domain names were all registered on November 1, 2024, using a privacy service to shield the name of Respondent; and

4.       Respondent disclosed by the Registrar is either not currently using the disputed domain names, or the names resolve to webpages using the trademark, promoting themselves as a financial 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.  Whilst the registered mark is not exactly a word mark and includes stylistic elements, those additions are minimal and for the purposes of the Policy the mark can be treated as a word mark.

 

For the purposes of comparison, the gTLD, ".com", can be disregarded in each case. Complainant submits that the names are then merely combinations of the trademark with random letters. The Panel finds that the disputed domain names are confusingly similar to Complainant's trademark (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.").

 

The 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 Williams Sonmerfield, nothing indicates that Respondent might be commonly known by the any of the domain names (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.  Two of the domain names, <cboebe.com> and <cboeig.com> are not in use. The remaining names - <cboepto.com>, <cboein.com>, <cboetop.com> and <cboeit.com> - resolve to essentially the same webpage promoting financial trading, the service in respect of which Complainant uses the trademark. The Panel finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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).").

 

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 names were 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 use of the <cboepto.com>, <cboein.com>, <cboetop.com> and <cboeit.com> domain names falls squarely under paragraph 4(b)(iv) above. Those names have already been found confusingly similar to the trademark. It is a reasonable and logical inference that the resolving online locations exist for commercial gain in some form or another, the exact mode being unimportant. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its online locations by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of those locations.

 

The issue with the <cboebe.com> and <cboeig.com> domain names is that they have not been used and do not otherwise clearly fall under any of the paragraph 4(b) scenarios. The Complaint appears to ignore this issue, making a blanket claim that the domain names were (all) used in bad faith. It states that "bad faith is evidenced by Respondent having affirmatively concealed its true identity" and "provided inaccurate or fictitious contact information" but those facts – albeit true – do not prove use in bad faith. If anything, they go towards proof of registration in bad faith.

 

Although the matter is not argued by Complainant, the Panel observes that non-use of a disputed domain name does not prevent a finding of bad faith [use] under the doctrine of passive holding provided the Complaint meets the requirements laid out in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

 

The fundamental requirement identified in that decision is proof of notoriety of the trademark. In that regard the Complaint states:

 

"[Complainant] is one of the most highly-regarded securities and derivatives exchanges in the United States and throughout the world", and that as a consequence of "Complainant's significant sales and extensive advertising and promotion over the years, the [trademark has] become well-known."

 

The evidence in support of those assertions is a Declaration of Daniel Wybenga, Senior Counsel at Complainant, made February 20, 2025, who states that Complainant's "advertising budget is substantial" and that it has spent "[i]n the past year alone, … significant time and money advertising its futures, securities and derivatives exchange services under the CBOE trademarks in multiple trade channels."  He goes on to state that Complainant "offers its trading and investment products internationally" and that those products include "options, futures, U.S. and European equities, exchange-traded products, and global foreign exchange."

 

Although those statements are unsupported by any quantitative data and would otherwise do little to assist Complainant in its cause to prove the repute of the trademark, Complainant also relies on its own website which does go some way to inferring that at the time the disputed domain names were created, the trademark would have had a reputation in the relevant financial sector.

 

The Panel finds that Complainant has brought just enough evidence to meet the requirements of Telstra Corporation Limited v. Nuclear Marshmallows with respect to passive holding (use) in bad faith.

 

Accordingly, the Panel finds that the third and final element of the Policy has not been satisfied with respect to all the disputed domain names.

 

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 <cboepto.com>, <cboein.com>, <cboetop.com>, <cboeit.com>, <cboeig.com> and <cboebe.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  March 28, 2025