Cboe Exchange, Inc. v. YIN QIU
Claim Number: FA2302002032426
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is YIN QIU (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cboeforex.vip>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 17, 2023; Forum received payment on February 17, 2023.
On February 22, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <cboeforex.vip> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. 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 February 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@cboeforex.vip. Also on February 27, 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 March 27, 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., offers securities and derivatives exchange services. Complainant has rights in the CBOE marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,484,436, registered September 4, 2001) and trademark authorities in other jurisdictions. The disputed domain name is identical or confusingly similar to Complainant’s CBOE mark because the disputed domain name uses Complainant’s full CBOE mark in the domain name and adds the descriptive term “forex” and uses the generic top level domain (“gTLD”) “.vip.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Respondent is using a confusingly similar name in connection with competing services. Respondent is using Complainant’s logo in its infringing website to deceive consumers.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract, for commercial gain, consumers to its infringing website. Respondent uses the disputed domain name to disrupt Complainant’s business. Respondent registered the disputed domain name using a privacy protection service. Additionally, Respondent had actual knowledge of Complainant’s rights in the CBOE mark prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on February 6, 2023.
2. Complainant has established rights in the CBOE mark based upon registration with the USPTO (e.g., Reg. No. 2,484,436, registered September 4, 2001) and trademark authorities in other jurisdictions.
3. The disputed domain name’s resolving website offers forex services similar to those offered by Complainant by displaying Complainant’s name and logo at the top of the webpage.
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 CBOE marks (e.g., Reg. No. 2,484,436, registered September 4, 2001) based upon registration with the USPTO and trademark authorities in other jurisdictions. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). As Complainant has provided evidence of registration of the CBOE mark with the USPTO and other agencies, the Panel finds that Complainant has established rights in the CBOE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <cboeforex.vip> is identical or confusingly similar to Complainant’s CBOE mark because the disputed domain name uses Complainant’s full CBOE mark in the domain name and adds the descriptive term “forex” and uses the “.vip” gTLD. The addition of a descriptive term as well as a gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel notes that term “forex” is merely a shortened version of the descriptive financial term “foreign exchange,” which does not sufficiently distinguish the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s CBOE mark per 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 asserts that Respondent is not commonly known by the disputed domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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). The unmasked WHOIS information of record names “YIN QIU “as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because (i) Respondent is using a confusingly similar name in connection with competing services; and (ii) Respondent attempts to deceive users about the association or affiliation between the disputed domain name and resolving website with Complainant by using Complainant’s name and logo at the top of the webpage. Using a disputed domain name or resolving website to offer competing services in a manner of confusing users about the association or affiliation between the disputed domain name and resolving website with Complainant is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). See also 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).”). Complainant provides screenshots of the disputed domain name’s resolving website, showing offerings of forex services similar to those offered by Complainant by displaying Complainant’s name and logo at the top of the webpage. The Panel thus finds Respondent failed to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per 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 contends that Respondent registered and uses the disputed domain name in bad faith. Respondent is using Complainant’s mark and logo for a website that purports to provide the same or similar services to Complainant’s in an attempt by Respondent to impersonate Complainant, likely to take Complainant’s customers’ information and money. The website includes a login page where Respondent presumably is scraping users’ password information. Such use of Complainant’s mark in connection with fraudulent activity is evidence of bad faith as it indicates Respondent’s attempts to attract, for financial gain, consumers to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website or services. Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel recalls that Complainant provides screenshot evidence of the disputed domain name’s resolving webpage offerings of forex services similar to those offered by Complainant by displaying Complainant’s name and logo at the top of the webpage having a login page where Respondent appears to be scraping users’ password information. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CBOE mark based on the use of Complainant’s name and exact logo. Complainant further asserts it first used the CBOE mark in 1972, well before Respondent registered the disputed domain name on February 6, 2023. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the CBOE mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <cboeforex.vip> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 30, 2023
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