Cboe Exchange, Inc. v. main main / main
Claim Number: FA2301002029519
Complainant is Cboe Exchange, Inc. (“Complainant”), USA, represented by Kevin M. Bovard of Baker & Hostetler LLP, USA. Respondent is main main / main (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directedgeant.com>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 27, 2023; Forum received payment on January 27, 2023.
On January 28, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <directedgeant.com> 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 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2023 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@directedgeant.com. Also on January 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Cboe Exchange, Inc., provides securities and derivatives exchanges. Complainant has rights in the DIRECT EDGE mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,672,274, which was registered on August 25, 2009). The disputed domain name is confusingly similar to the DIRECT EDGE mark because it incorporates the entire mark while merely adding the letters “ant” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not licensed or authorized to use Complainant’s DIRECT EDGE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent seeks to confuse users as to the source or affiliation of the disputed domain name and offers services that compete with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent has been involved in several prior UDRP proceedings. Respondent also disrupts Complainant’s business by offering competing services. Respondent seeks to attract users for commercial gain by impersonating Complainant and causing confusion as to the source or affiliation of the domain name. Respondent is conducting a phishing scheme. Respondent registered the disputed domain name with inaccurate or incomplete WHOIS information and with constructive and/or actual knowledge of Complainant’s rights in the DIRECT EDGE mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on September 4, 2022.
2. Complainant has established rights in the DIRECT EDGE mark through numerous trademark registrations, including with the USPTO (e.g., Reg. No. 3,672,274, which was registered on August 25, 2009).
3. The disputed domain name resolves to a page that features the DIRECT EDGE mark and logo.
4. The disputed domain name's resolving website offers cryptocurrency purchase and trading services, and displays cryptocurrency market data.
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 claims rights in the DIRECT EDGE mark through multiple trademark registrations, including with the USPTO (e.g., Reg. No. 3,672,274, which was registered on August 25, 2009). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the DIRECT EDGE mark with the USPTO, the Panel finds that Complainant has established rights in the DIRECT EDGE mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <directedgeant.com> is confusingly similar to its DIRECT EDGE mark since it incorporates the entire mark and then merely adds the letters “ant” and the “.com” gTLD. When a disputed domain name wholly incorporates a mark, adding random letters and a gTLD, it is insufficient to defeat a finding of confusing similarity. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Given that the disputed domain name only adds letters and a gTLD to the DIRECT EDGE mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the DIRECT EDGE mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. The WHOIS information for disputed lists the registrant as “main main / main.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the DIRECT EDGE mark or in any way associated with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also contends that Respondent seeks to confuse Internet users through falsely associating itself as or as associated with Complainant. Previous panels have declined to find a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a domain name per Policy ¶ 4(c)(iii) when a respondent passes itself off as and impersonates a complainant. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In this case, Complainant provides evidence that the disputed domain name resolves to a page that features the DIRECT EDGE mark and logo. In addition, Complainant argues that Respondent is using the disputed domain name to compete with Complainant. A respondent’s use of a disputed domain name to offer goods or services that compete with those of a complainant has consistently been held not to satisfy Policy ¶¶ 4(c)(i) or (iii). Complainant provides a screenshot showing that Respondent offers cryptocurrency purchase and trading services, and also displays cryptocurrency market data.
Given the circumstances above, the Panel finds that Respondent attempts to pass itself off as Complainant and confuse customers by using Complainant’s mark and logo on the resolving site. Respondent is also using the disputed domain name to compete with Complainant. Therefore, the Panel finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent is a serial cybersquatter who has frequently targeted Complainant. A respondent’s involvement in prior UDRP proceedings against a complainant that resulted in transfer of the domain name may indicate a pattern of bad faith registration and use and thus support a finding of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks). Complainant provides four (4) UDRP citations where Respondent is a party against Complainant that resulted in transfer of the pertinent domain names. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent purportedly offers competing trading services. Previous panels have determined that a respondent’s use of a disputed domain name to offer goods or services in competition with those of a complainant shows bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). As noted above, Respondent appears to offer cryptocurrency purchase and trading services, as well as cryptocurrency market data which are in competition with those of Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
In addition, Complainant argues that Respondent impersonates Complainant and thereby causes confusion as to the source or affiliation of the domain name and resolving site. Use of a disputed domain name to pass off as or as associated with a complainant has been held to demonstrate a respondent’s bad faith attempt to attract users for commercial gain per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). The Panel notes that in addition to holding itself out as a financial trading business like Complainant, the disputed domain name's resolving webpage displays the DIRECT EDGE mark and logo in the header. The Panel finds that Respondent passes itself off as Complainant, and thus it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant claims that Respondent had constructive and/or actual knowledge of Complainant’s rights in the DIRECT EDGE mark when registering the disputed domain name. To support its claim, Complainant notes Respondent’s use of the mark and logo on the resolving site. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant’s rights in its mark, which constitutes bad faith registration per 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 <directedgeant.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 24, 2023
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