Cboe Exchange, Inc. v. shan shan he
Claim Number: FA2210002016747
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is shan shan he (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <cboeforex.com> and <cboefx-vip.com>, registered with Gname.Com Pte. Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on October 19, 2022; Forum received payment on October 19, 2022.
On October 24, 2022 and November 8, 2022, Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <cboeforex.com> and <cboefx-vip.com> domain names are registered with Gname.Com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.Com Pte. Ltd. has verified that Respondent is bound by the Gname.Com Pte. Ltd. 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 November 10, 2022, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of November 30, 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@cboeforex.com, postmaster@cboefx-vip.com. Also on November 10, 2022, the Chinese and English language 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 December 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is reasonably conversant and proficient in the English language and that going forward in Chinese would place an unjust burden on Complainant. Therefore, after considering the circumstances of the present case including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Cboe Exchange, Inc. is one of the most highly-regarded securities and derivatives exchanges in the United States and throughout the world.
Complainant registered the CBOE mark with the United States Patent and Trademark Office (“USPTO”) as well as with many other national trademark registries worldwide.
Respondent’s <cboeforex.com> and <cboefx-vip.com> domain names are confusingly similar to Complainant’s mark as both wholly incorporate Complainant’s CBOE mark before adding a descriptive term, a hyphen in the case of <cboefx-vip.com>, and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cboeforex.com> and <cboefx-vip.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its CBOE mark. Respondent also does not use the at-issue domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass itself off as Complainant and effectuate a phishing scheme.
Respondent registered and uses the <cboeforex.com> and <cboefx-vip.com> domain names in bad faith. Respondent uses the domain names to pass itself off as Complainant and effectuate a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the CBOE mark prior to registration of the at-issue domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CBOE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CBOE trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and effectuate a phishing scheme.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for CBOE, as well as any of its other national trademark registrations for such mark, establishes Complainant’s rights in CBOE for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy
¶ 4(a)(i)); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
The at-issue domain names consist of Complainant’s CBOE trademark followed by the term(s) “forex” or “fx-vip” and both domain names concluding with the “.com” top level domain name. The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <cboeforex.com> and <cboefx-vip.com> domain names are each confusingly similar to Complainant’s CBOE trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain names.
WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “shan shan he.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either <cboeforex.com> or <cboefx-vip.com>. The Panel therefore concludes that Respondent is not commonly known by <cboeforex.com> or <cboefx-vip.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <cboeforex.com> and <cboefx-vip.com> domain names to pass itself off as Complainant in furtherance of phishing. Upon browsing to such domain names internet users find websites displaying Complainant’s misappropriated name, registered logo mark, and images of Complainant’s mobile application. The websites also feature a login screen where Respondent may capture the personal information of visitors who mistakenly believe they are accessing Complainant’s own CBOE related websites. Respondent thus capitalizes on the confusion it created between the domain names and Complainant’s trademark. Respondent’s use of <cboeforex.com> and <cboefx-vip.com> in such manner demonstrates Respondent’s scheme to pass itself off as Complainant and exploit Complainant’s trademark to phish for personal data. Such use of the confusingly similar domain names is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent registered and uses the <cboeforex.com> and <cboefx-vip.com> domain names to pass itself off as Complainant so that it might benefit by capitalizing on the goodwill resident in Complainant’s trademark. As mentioned above regarding rights and legitimate interests, Respondent poses as Complainant so that it may extract personal private data from internet users that mistakenly believe they are engaging with Complainant. Using the domain names in this manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Next, Respondent’s use of the domain names to perpetrate a phishing scheme aimed at collecting private data from deceived internet users is further evidence of Respondent’s bad faith under Policy
¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also, Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of internet users through a confusingly similar domain name).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CBOE mark when it registered <cboeforex.com> and <cboefx-vip.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the two domain names to pass itself off as Complainant and phish for personal data. Respondent’s registration of the confusingly similar domain names without having rights or legitimate interests in such domain names but having knowledge of Complainant’s trademark rights therein additionally shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cboeforex.com> and <cboefx-vip.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 7, 2022
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