optionsXpress Holdings, Inc. v. David A
Claim Number: FA1701001711999
Complainant is optionsXpress Holdings, Inc. (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is David A (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <optionexpress.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 12, 2017.
On January 12, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <optionexpress.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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 postmaster@optionexpress.net. Also on January 16, 2017, 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 February 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant has registered the OPTIONSXPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,618,175, registered Sept. 10, 2002). See Compl., at Attached Ex. C. Respondent’s <optionexpress.net> is a mere misspelling of the OPTIONSXPRESS mark because it replaces the first “s” in the mark with an “e” and adds the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in <optionexpress.net>. Respondent is not commonly known by <optionexpress.net> because there are no records of any registration of “optionexpress inc.” with the Illinois Secretary of State, and Respondent has never used any trade or service mark similar to the disputed domain name, other than its infringing use. The resolving website solicits Internet users for services that directly compete with Complainant without any disclaimer of association with Complainant, which defrauds Internet users into believing there is a connection with Complainant. See Compl., at Attached Ex. G. This does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <optionexpress.net> in bad faith. Respondent’s competitive use is disruptive of Complainant’s business, and Respondent likely profits from its use—demonstrating bad faith under Policy ¶¶ 4(b)(iii) and (iv). Respondent also has registered <optimumexpres.net> and arranged a spoof website, copying content from a website owned by Complainant. See Compl., at Attached Ex. H. Complainant demanded the website be taken down, and the registrar complied. See Compl., at Attached Ex. I. This shows that Respondent had actual and/or constructive knowledge of Complainant, showing bad faith under Policy ¶ 4(a)(iii). The domain name is also a typosquatted version of the OPTIONSXPRESS mark, also bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of online options and futures brokerage.
2. Complainant has established its trademark rights by registering the OPTIONSXPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,618,175, registered Sept. 10, 2002).
3. Respondent registered the <optionexpress.net> domain name on August 16, 2016.
4. The website to which the domain name resolves solicits Internet users for services that directly compete with Complainant without any disclaimer of association with Complainant, which defrauds Internet users into believing there is a connection with Complainant.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits it has registered the OPTIONSXPRESS mark with the USPTO (Reg. No. 2,618,175, registered Sept. 10, 2002). See Compl., at Attached Ex. C. USPTO registrations confer rights. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds Complainant has rights in the OPTIONSXPRESS mark under Policy ¶ 4(a)(iii).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OPTIONSXPRESS mark. Complainant argues that Respondent’s <optionexpress.net> domain name is a mere misspelling of the OPTIONSXPRESS mark because it replaces the first “s” in the mark with an “e” and adds the gTLD “.net.” Such alterations have been deemed confusingly similar to trademarks. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”); see also Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (finding, “The addition of the gTLD ‘.net’ also has no effect on the Policy ¶ 4(a)(i) analysis.”). The Panel finds that “s” and “e” are adjacent on a QWERTY keyboard, and the addition of “.net” is irrelevant, and therefore the <optionexpress.net> domain name is confusingly similar to the OPTIONSXPRESS mark under Policy ¶ 4(a)(iii).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OPTIONSXPRESS mark and to use it in its domain name, with only minor spelling alterations;
(b) Respondent registered the disputed domain name on August 16, 2016;
(c) Respondent has used the website to which the domain name resolves to solicit Internet users for services that directly compete with Complainant without any disclaimer of association with Complainant, which defrauds Internet users into believing there is a connection with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the domain name because Respondent is not commonly known by <optionexpress.net>. There are no records of any registration of “optionexpress inc.” with the Illinois Secretary of State, and Respondent has never used any trade or service mark similar to the disputed domain name, other than its infringing use. Where a respondent has not submitted a response, complainants may create a prima facie case through simple arguments like pointing to the WHOIS of record. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). As the WHOIS lists “David A” as registrant, and while Respondent has no reported registration of any business entity with the Illinois Secretary of State or any trade/service mark rights on record, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that the resolving website solicits Internet users for services that directly compete with Complainant without any disclaimer of association with Complainant, which defrauds Internet users into believing there is a connection with Complainant. See Compl., at Attached Ex. G. Competitive use may not establish any rights or legitimate interests. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 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 Panel notes that the resolving website offers financial services. Therefore, the Panel concludes that Respondent’s use does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <optionexpress.net> domain name in bad faith. Complainant submits that Respondent’s competitive use is disruptive of Complainant’s business, and Respondent likely profits from its use—demonstrating bad faith under Policy ¶¶ 4(b)(iii) and (iv). Competitive use has been considered bad faith under both prongs of the Policy. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). The Panel finds that Complainant’s Exhibit G sufficiently demonstrates Respondent’s intent to disrupt Complainant’s business for the purpose of commercial profit by confusing Internet users pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had at least constructive knowledge of Complainant’s trademark when registering and using the domain name. Constructive knowledge usually fails as an argument for finding bad faith under the Policy. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). The Panel therefore turns to evidence of actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To this end, Complainant argues that Respondent also has registered <optimumexpres.net> and arranged a spoof website, copying content from a website owned by Complainant. See Compl., at Attached Ex. H. Complainant demanded the website be taken down, and the registrar complied. See Compl., at Attached Ex. I. The Panel agrees that this, along with Respondent’s competing use, shows that Respondent had actual knowledge of Complainant, showing bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that the domain name is also a typosquatted version of the OPTIONSXPRESS mark, also constituting bad faith under Policy ¶ 4(a)(iii). “ Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited.” SeeTwitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015). Here, Respondent simply changes a single letter to create the domain name, and the letter replaced—“s”—is exchanged for an adjacent letter—“e.” Therefore, the Panel agrees that Respondent has registered a typosquatted version of Complainant’s mark in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the OPTIONSXPRESS mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <optionexpress.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 15, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page