Intercontinental Exchange Holdings, Inc. v. Dmitry Vasilev / Elmaco Ltd.
Claim Number: FA1612001709953
Complainant is Intercontinental Exchange Holdings, Inc. (“Complainant”), represented by Richard L. Cruz of DLA Piper LLP (US), Pennsylvania, USA. Respondent is Dmitry Vasilev / Elmaco Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <the-ice.com>, registered with DevilDogDomains.com, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on December 29, 2016; the Forum received payment on December 30, 2016.
On December 29, 2016, DevilDogDomains.com, LLC confirmed by e-mail to the Forum that the <the-ice.com> domain name is registered with DevilDogDomains.com, LLC and that Respondent is the current registrant of the name. DevilDogDomains.com, LLC has verified that Respondent is bound by the DevilDogDomains.com, 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 December 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2017 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 firstname.lastname@example.org. Also on December 30, 2016, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in ICE and THE ICE and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
As stated, Respondent failed to submit a formal Response in this proceeding. Nonetheless, the Panel has taken into account[i] Respondent’s informal communication with the Forum where it wrote:
“… It's a generic domain name, and for all English s[peaking persons, outside the industry Intercontinental Exchange Holdings operates, word ICE has only one meaning - frozen water. It's impossbile to guess, that word "ice" can be a trademark..” (sic)
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial services by reference to the trademark ICE;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 2,530,330, filed May 12, 1999 and registered January 15, 2002 for the word mark ICE;
3. the disputed domain name was registered on December 21, 2015;
4. the domain name is parked at a webpage with various links apparently unconnected with Complainant; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a relevant trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant argues that the disputed domain name “is confusingly similar to more than one of the ‘ICE Marks’”, previously defined as a broad range of internationally registered trademarks consisting of, or including, the word ICE.
Given that the defined term “ICE Marks” includes, by way of only two examples, the trademarks WEBICE and ICE TRADE SWAPS - neither on any analysis confusingly similar to the disputed domain name – it appears that it has been left to the Panel to make its own evaluation of which of the “ICE Marks” might be relevant to the paragraph 4(a)(i) analysis.
Complainant provides proof of its USPTO registration for ICE, so this is the most obvious starting point. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. The Panel is therefore satisfied that Complainant has trademark rights in ICE.[ii]
Complainant next broad proposition is that the disputed domain name “incorporates more than one of the ICE Marks. To remain factually accurate, that claim limits the relevant class of trademarks to two – namely, ICE and THE ICE.
Appropriately read down, Complainant then submits that the domain name differs from those two trademarks by the addition of non-distinctive matter.
The Panel takes note that for the purposes of comparison the generic top-level domain (gTLD), “.com”, can be disregarded.[iii] So, too, can hyphenation - indeed hyphenation will frequently make the trademark component of a composite domain name only more obvious.[iv] Finally, it might be said that the definite article, “the”, is per se non-distinctive.
Respondent’s informal submission is that “ice” is a common dictionary word and free from monopolization by one trader. Albeit that Respondent fails to elaborate on that submission the Panel takes notice that “ice” is a commonly known noun. Further, to the extent that the letters “ICE” might be an acronym for, or otherwise connote, Complainant’s business, the Panel observes (i) that the Complaint falls short of proving common law trademark rights in ICE (and so fails to establish to the Panel’s satisfaction that the letters “ICE” would primarily indicate to the public Complainant’s trademark over and above the ordinary dictionary signification of the word), and (ii) even if the letters “ICE” are said to be an acronym for Complainant’s business, those letters are also an acronym for a host of other enterprises or services or goods.[v]
Without the need to come to a conclusive finding on what the Panel regards as an uneasy comparison between the trademark ICE and the disputed domain name, the Panel turns to the more obvious comparison of the domain name with Complainant’s asserted trade mark rights in THE ICE.
The Complaint does not carry full bibliographic details of any trademark registration for THE ICE. The Panel reviewed the list of international registrations exhibited to the Complaint and noted a claim to a registration at EUIPO (formerly CTMO) for that mark under Reg. No. 001763135, filed July 18, 2000 and registered September 24, 2003.
The Panel is permitted to make limited enquiries to satisfy itself of factual matters and reference to the publicly available trademark database held by EUIPO showed that registration to be for the word mark THE ICE and to be in force. A better Complaint might have included that information.
The Panel finds that the disputed domain name is legally identical to the trademark THE ICE. According, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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 trade mark 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.[vi]
The publicly available WHOIS information identifies “Dmitry Vasilev” as the domain name registrant and Elmaco Ltd as the registrant organization. Accordingly, there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The domain name is parked with its Registrar and resolves to a webpage with advertising links. The screenshot of that webpage provided with the Complaint shows links all somehow related to goods commonly known as ice machines. The Panel revisited the resolving webpage at the time of this decision and noted that the links are now all somehow related to ice skating. The Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.[vii]
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
In the absence of a Response or any submissions on the matter and in the face of the use of the domain name to date, the Respondent has not rebutted that case. The Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being 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.
Complainant submits that Respondent’s actions fall under paragraph 4(b)(iii) above. The Panel does not accept that submission. The use of the domain name already described does not disclose a business, still less one that might characterize Respondent to be a competitor of Complainant within the terms of paragraph 4(b)(iii). The Panel finds that there is no evidence whatsoever that Respondent was primarily actuated by a motive described in any of subparagraphs (i) to (iii) above.
However, in terms of paragraph 4(b)(iv) of the Policy, the Panel has already found the domain name to be confusingly similar to the trademark (and so the requisite likelihood of confusion exists). Further, UDRP panelists have consistently found use in bad faith where the disputed domain name resolved to an online location featuring links unrelated to a complainant’s business under the relevant trademark, through which a respondent presumably gained commercially.[viii]
Nonetheless, although on its face paragraph 4(b)(iv) of the Policy only requires proof of use in bad faith, it has been said that the provision should be applied carefully where there is clearly no evidence of registration in bad faith.
In this case that caveat requires consideration. The Panel has already commented on the dictionary meaning of the word “ice” and the frequency with which the letters “ICE” are used as an acronym for disparate goods or interests. Further, although the Panel has found the use of the domain name to be in bad faith, that use does not target Complainant’s business under the trademark. Furthermore, although Complainant has trademark rights in THE ICE and uses for its official website the domain <theice.com>, there is no evidence filed with the Complaint of use of the trademark THE ICE, nor does the website use that expression.
Under that part of Complainant’s website entitled “PERSONALIZED SUPPORT : SERVING CUSTOMERS AROUND THE WORLD”, it is said that:
“Our business is built around the recognition that the needs of our customers should come first. Whether it’s a Q&A phone call with our 24-hour trading help desk, a platform tutorial with a technical account manager or a one-on-one meeting with an ICE product expert, we’re here to support your needs whenever and wherever you need us.”
Under that part of Complainant’s website concerned with the company’s markets, it is said:
“Every day, companies from a wide range of industries turn to ICE to help them manage price and counterparty risk so they can focus on their business priorities: progress and growth. To ensure we can deliver on and meet that responsibility, we’ve created a unique global market infrastructure that spans the jurisdictions our customers do business in.”
The “ICE MARKETS” are then described, thus:
“The types of products or specific contracts you want to trade will determine which ICE market you participate in. Take a look at the table below to see which asset classes trade in each of our markets.
ICE FUTURES EUROPE
ICE FUTURES U.S.
ICE FUTURES CANADA
ICE FUTURES SINGAPORE
ICE SWAP TRADE
ICE OTC ENERGY”
Noticeable by its absence is any use of THE ICE as either a trademark or in some other way.
Since this Panel is in agreement with the consensus view that a respondent in UDRP proceedings is not on constructive notice of rights by reason only of a Federal trademark registration[ix], it might be questioned what evidence exists that Respondent here targeted Complainant at the time of registration.
On the other hand, although the Panel has recognized the definite article, “the”, to be - of itself - a non-distinctive integer, the expression “the ice” is to a degree, unusual. Certainly it does not obviously relate to ice machines, or ice skating, or indeed to a wide range of things pertaining somehow to ice. Put another way, it has a trademark “ring” to it. Enough so, the Panel finds, that its adoption by Respondent required some explanation in these Administrative Proceedings.
None was given and since, as indicated, the operation of paragraph 4(b)(iv) might only be suspended on clear evidence of good faith registration, the Panel finds registration and use in bad faith under paragraph 4(b)(iv) and accordingly finds that Complainant has satisfied the final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <the-ice.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 12, 2017
[i] This is a matter of discretion for the Panel. See, for example, Sears Brands, LLC v. Airhart, FA 1350469 (FORUM Dec. 2, 2010) electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5; cf Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (FORUM Jan. 7, 2011) deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[iii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
[iv] See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (FORUM Feb. 18, 2004) finding that hyphenation is generally irrelevant for purposes of this aspect of the Policy.
[v] For example, Immigration and Customs Enforcement (US Department of Homeland Security; formerly parts of Immigration & Naturalization Service and US Customs); In Case of Emergency; Information and Content Exchange (W3C protocol); Internal Combustion Engine; Ice, and Compression, Elevation (medical; sprains, injuries, etc.) to name just a handful.
[vi] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) stating that: “The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”
[viii] See, for example, Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015).
[ix] See, for example, The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003).
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