Cboe Exchange, Inc. v. cboe cboe
Claim Number: FA2207002005186
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is cboe cboe (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboe.cloud>, registered with GoDaddy.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2022; the Forum received payment on July 21, 2022.
On July 22, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cboe.cloud> 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 August 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@cboe.cloud. Also on August 1, 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 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CBOE service mark established by its ownership of its international portfolio of service mark registrations described below and its extensive use of the mark since 1972, including online on its web platform at <https://www.cboe.com>, providing financial services in its currency and securities exchange.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates Complainant’s entire mark, merely adding the generic top-level domain (“gTLD”) suffix <.cloud>.
Complainant adds that the gTLD <.cloud> extension does not affect the determination of the identity or similarity between the disputed domain name and the CBOE trade mark. See Takeda Pharmaceutical Company Ltd. v. jose Garcia, FA2011001921599 (Forum Dec. 21, 2020) (finding the disputed domain name identical to Complainant’s mark as the addition of the TLD “.cloud” is irrelevant in determining confusing similarity).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that such finding is supported by the fact that Respondent registered the disputed domain name while availing of a privacy service to conceal its identity. See Beemer Precision, Inc. v. S.K. DAS / Oilite Industries, FA2109001966609 (Forum Oct. 28, 2021) (“WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.”).
While the now-revealed WHOIS information lists the registrant of the disputed domain name as “cboe cboe,” there is no affirmative evidence that the Respondent is actually commonly known by this name as opposed to simply registering the disputed domain name under a false name for the purpose of asserting rights or legitimate interests.
To the contrary, Complainant asserts that it has found no evidence of a legitimate company named “cboe cboe” nor “Cboe Limited Company” as listed at the bottom of Respondent’s website, in Hong Kong or any other jurisdiction listed on Respondent’s website.
Further, the WHOIS contact information includes an incomplete or non-existent address as the only information provided is “Xiang Gang,” which is the Chinese name for “Hong Kong,” and the provided postal code belongs to Khoperskoe, Russia.
Therefore, since there is no affirmative evidence of Respondent’s identity, it can be concluded that Respondent is not commonly known by the disputed domain name. See Beemer Precision, Inc. v. S.K. DAS / Oilite Industries, FA2109001966609 (Forum Oct. 28, 2021) (finding the respondent was not actually known by the disputed domain name even when the WHOIS information listed “Oilite Industries” as the Registrant, because Complainant provided evidence that there was no registered entity known by that name in the purported location of Respondent).
Furthermore, Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of its CBOE marks in the disputed domain name; nor has Complainant authorized, licensed or endorsed Respondent’s use of Complainant’s CBOE logo on the resulting webpage.
Referring to a screen capture of the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint, Complainant contends that Respondent trades on the goodwill of Complainant’s trademark, purposely creating consumer confusion in a manner allowing Respondent to prey on individuals when they mistakenly believe the disputed domain name is associated with Complainant. A declaration of the Counsel for Complainant’s parent corporation avers that Complainant is unaware of any legitimate companies in the financial services industry doing business under any similar name.
Complainant next alleges that Respondent registered and uses the disputed domain name in bad faith, having both constructive and actual notice of the CBOE marks.
Complainant contends that Respondent’s constructive notice is by itself sufficient for a determination of bad faith. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case number D2001-1384 (finding bad faith registration and use where the respondent had constructive notice of the complainant’s trademark at the time of registration).
Referring to said screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant adds that beyond constructive notice, Respondent use of Complainant’s name and exact logo demonstrate that Respondent had actual notice of Complainant’s marks and services. See Regions Bank v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA2111001974664 (Forum Jan. 3, 2022) (finding bad faith actual knowledge of Complainant’s rights in its marks where the mark is incorporated in the domain name and using the mark in the respondent’s resolving website).
Complainant contends that said screen capture illustrates Respondent’s unauthorized use of Complainant’s mark and logo on its website that purports to provide the same or similar services to those offered by Complainant in an attempt by Respondent to impersonate Complainant. Complainant submits that such use of the disputed domain name within the website address is likely to take Complaint’s customers’ information and money. Complainant adds that the exhibited website includes a login page where Respondent presumably is scraping users’ password information.
Because of the nature of Complainant’s business, operating as it does, a securities and derivatives exchange for trading, Respondent’s use of Complainant’s name and logo in its top banner of its website, holding itself out as providing a financial trading platform, while passing itself off as being, or being associated with Complainant, is particularly nefarious.
Complainant adds that such use of Complainant’s marks in connection with fraudulent activity indicates Respondent’s actual knowledge of Complainant and that Respondent is making attempts to attract, for financial gain, consumers to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services, constituting bad faith for the purposes of the Policy. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Furthermore, Complainant contends that bad faith is evidenced by the fact that the disputed domain name is used to compete with Complainant, effectively disrupting Complainant’s business. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Complainant adds that bad faith is also evidenced by Respondent having affirmatively concealed its true identity, when considered in light of Respondent’s illegitimate selection and lack of use of the disputed domain name. See Medco Health Solutions, Inc. v. Whois Privacy Prot. Serv., Inc., D2004-0453 (WIPO 2004) (“Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is yet another example of bad faith conduct.”).
Finally, Complainant repeats that bad faith registration and use of the disputed domain name is proven by Respondent having provided inaccurate or fictitious contact information as there is no evidence of a legitimate company named “cboe cboe” nor “Cboe Limited Company” as listed at the bottom of Respondent’s website. Additionally, the now-revealed WHOIS information includes an incomplete or non-existent address as the only information provided is “Xiang Gang,” which is the Chinese name for “Hong Kong,” and the provided postal code belongs to Khoperskoe, Russia. Considering Respondent’s illegitimate selection and use of the disputed domain name, such failure to provide correct details of identity for the WhoIs, supports the inference that Respondent has knowingly engaged in the registration and use of the disputed domain name in bad faith. 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).”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, a subsidiary of Cboe Global Markets, Inc., is a provider of financial services, specifically a securities and derivatives exchange, using the service mark CBOE for which it owns a portfolio of service mark registrations including the following:
· United States service mark registration CBOE (figurative), registration number 5,613,242, registered on the Principal Register on November 20, 2018 for services in international class 36;
· United States service mark registration CBOE, registration number 2,484,436 registered on the Principal Register on September 4, 2001 for services in international class 36
· Hong Kong registered service mark CBOE, registration number 304288429, registered on September 28, 2017 for goods in class 36.
Complainant has an established Internet presence and operates its securities and derivatives exchange on web platform at <https://www.cboe.com>. The domain name <cboe.com> is owned by Complainant and was created on August 11, 1994.
The disputed domain name <cboe.cloud> was registered on June 9, 2022 and resolves to a website purporting to impersonate Complainant, offering competing services, providing information about financial markets and rates, and offering a “Cboe Official App Download” to internet visitors.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for information relating to the registration of the disputed domain name in the course of this proceeding.
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”).
Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the CBOE mark, established by its ownership of its portfolio of service mark registrations described above and extensive use of the mark in its financial services business providing an online securities and derivatives exchange.
The disputed domain name <cboe.cloud> consists of Complainant’s mark in its entirety, with no other element except the generic Top Level Domain (“gTLD”) extension <.cloud>.
The gTLD extension <.cloud> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s CBOE mark.
This Panel finds therefore that the disputed domain name <cboe.cloud> is identical to the CBOE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent registered the disputed domain name availing of a privacy service to conceal its identity and the WHOIS information revealed by the Registrar in the course of this proceeding lists the registrant as “cboe cboe,” there is therefore no affirmative evidence that the Respondent is actually commonly known by this name as opposed to simply registering the disputed under a false name for the purpose of asserting rights or legitimate interests;
· To the contrary, Complainant has found no evidence of a legitimate company named “cboe cboe” nor “Cboe Limited Company” as listed at the bottom of Respondent’s website, in Hong Kong or any other jurisdiction listed on Respondent’s website;
· the WHOIS contact information includes an incomplete or non-existent address for Respondent, as the only information provided is “Xiang Gang,” which is the Chinese name for “Hong Kong,” and the provided postal code belongs to Khoperskoe, Russia;
· as the WHOIS information includes a non-existent address and company and since there is no affirmative evidence of Respondent’s identity, it can be concluded that Respondent is not commonly known by the disputed domain name;
· Complainant has not authorized, licensed, or endorsed Respondent’s use of its CBOE marks in the disputed domain name;
· Complainant authorised, licenced or endorsed Respondent’s the use of Complainant’s CBOE logo on the resulting webpage;
· The screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that Respondent trades on the goodwill of Complainant’s trademark, purposely creating consumer confusion in a manner allowing Respondent to prey on individuals when they mistakenly believe the disputed domain name is associated with Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The earliest registration for the CBOE service mark which is relied upon by the Complainant is dated September 4, 2001, long before the disputed domain name was registered on June 9, 2022.
The uncontested evidence is that in recent years, Complainant has maintained a web platform for its securities and derivatives exchange at <https://www.cboe.com> that has acquired an international reputation.
The CBOE mark is distinctive and has no obvious meaning except as Complainant’s mark. and the record shows that it is derived from an acronym of “Chicago Board Options Exchange”, so there is no obvious reason as to why the disputed domain name might have been chosen and registered, other than to make reference to, and target the goodwill in Complainant’s CBOE mark.
Furthermore, given the duration and extent of Complainant’s prior rights and reputation in the CBOE mark, it is implausible that the registrant chose and registered the disputed domain name without knowledge of Complainant, its rights and its mark.
On the balance of probabilities, the disputed domain name was chosen and registered to target and take predatory advantage of Complainant’s mark and goodwill in the CBOE mark and so this Panel finds therefore that the disputed domain name was registered in bad faith.
Additionally, the uncontested evidence is that Respondent, who availed of a proxy service to conceal the registration details on the published WhoIs, has registered the disputed domain name providing a false name and address.
The screen captures of the website to which the disputed domain name resolves shows that Respondent is using the disputed domain name as a website address on which Respondent purports to offer services almost identical to those offered by Complainant.
Respondent is using Complainant’s name and CBOE mark without authority on the website. In particular Respondent is using Complainant’s United States service mark registration CBOE (figurative), registration number 5,613,242 as a logo.
Of particular concern also, especially given that Complainant’s almost identically named website offers securities and derivatives exchange services, is that Respondent is suspiciously using the website to make a purported offer of a “Cboe Official App Download” to unsuspecting internet visitors, while presenting itself as being Complainant.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's CBOE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the competing services and suspicious download purported to be offered on Respondent’s web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboe.cloud> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 26, 2022
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