Cboe Exchange, Inc. v. \ucc3d\ud604 \uc774
Claim Number: FA2207002004853
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is \ucc3d\ud604 \uc774 (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboermc.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2022; the Forum received payment on July 19, 2022.
On July 20, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cboermc.com> Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2022 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@cboermc.com. Also on July 22, 2022, 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 August 15, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant owns the trade mark CBOE registered, inter alia, in the USA for financial services with first use recorded as 1972. The Complainant also owns common law rights in the mark CBOE RMC as for 36 years the Complainant has hosted a conference called CBOE RMC, which is short for Cboe Risk Management Conference. The Complainant previously owned and operated the Domain Name beginning on September 8, 2008. The Complainant inadvertently allowed the Domain Name’s registration to lapse on or about October 8, 2021, due to the renewal notice being sent to a departed employee.
The Domain Name acquired by the Respondent in 2021 is confusingly similar to the Complainant’s registered trade mark containing it in its entirety and identically reflecting the Complainant’s CBOE RMC common law mark adding only the gTLD ‘.com’ which does not distinguish the Domain Name from the Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name resolves to webpages displaying two rudimentary blog posts about “anti-cancer food” and “indigestion.” They appear to be mere placeholder content, not real and legitimate business interests. This supports the conclusion that the Respondent has no rights or legitimate interest in the Domain Name. Panels have previously found that mere placeholder content does not constitute either a bona fide offer or a legitimate noncommercial or fair use.
Respondent opportunistically registered the Domain Name in bad faith. It has used a privacy service and has provided inaccurate or fictitious contact information as the now-revealed WHOIS information includes a non-existent address made up of a string of random letters, numbers and symbols which is also indicative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark CBOE registered, inter alia, in the USA for financial services with first use recorded as 1972. The Complainant also owns common law rights in the mark CBOE RMC as for 36 years the Complainant has hosted a conference called CBOE RMC, which is short for Cboe Risk Management Conference. The Complainant previously owned and operated the Domain Name beginning on September 8, 2008. The Complainant inadvertently allowed the Disputed Domain Name’s registration to lapse on or about October 8, 2021.
The Domain Name acquired by the Respondent in 2021 resolves to webpages displaying two blog posts about “anti-cancer food” and “indigestion.” The Respondent has provided false contact details to the WhoIS database.
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 Domain Name consists of the Complainant's CBOE RMC mark (in which the Complainant owns common law rights for financial conference services after 36 years of use) and the gTLD ‘.com’.
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 the Domain Name being identical to the Complainant’s CBOE RMC mark for the purposes of the Policy.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent is not authorized by the Complainant and does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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).
In previous cases where Respondents have not made demonstrable preparations to make meaningful use of a domain name this has been held not to constitute rights and legitimate interests in a domain name See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) where the Panel concluded that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out. Respondent has not answered this Complaint or sought to argue that the limited content is not stock or placeholding content with no relevance to the Domain Name. On the balance of probabilities the Panel finds that it is and that the Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy 4(c)(i) or (iii).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent registration and use of the Domain Name appears to constitute opportunistic bad faith as the domain name is highly distinctive and specific and obviously connected to Complainant’s mark. Past panels have found evidence of opportunistic bad faith registration and use where it is impossible for the respondent to make any active use of the disputed domain name without creating a false impression of association with the complainant. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Domain Name containing the Complainant’s CBOE RMC mark (which has a reputation for financial conferences and is distinctive of the same) is being passively held without content relevant to the Domain Name without any explanation causing disruption to the Complainant’s business. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further Respondent has provided false contact information in the WhoIS database. Under Policy 4(a)(iii), providing false or misleading contact information may be evidence of bad faith registration and use. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
As such, the Panel holds that the 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboermc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 15, 2022
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