The Complainant is Intercontinental Exchange Holdings, Inc. (ICE), United States of America (“United States” or “U.S.”), represented by DLA Piper US LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / You Are, Not, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 3, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on May 31, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant owns numerous trademark registrations for ICE and related marks in the United States and worldwide, including U.S. Registration No. 2,530,330 for ICE for “commodity exchange services rendered via global computer network,” registered on January 15, 2002, and U.S. Registration No. 2,978,085 for ICE for “providing an online exchange service for purchasing and selling commodities and commodity derivatives, providing online commodities and commodity derivatives pricing and related information,” registered on July 26, 2005. The Complainant also owns and operates the “www.ice.com” and “www.icemortagetechnology.com” websites. The former website advertises ICE’s products and services in general, whereas the latter website specifically advertises ICE’s products and services relating to mortgages and home loans. The Respondent registered the disputed domain name on October 23, 2020. The disputed domain name automatically redirects to ICE’s website at “www.icemortgagetechnology.com.” 5. Parties’ Contentions A. Complainant The Complainant is an international operator of global exchanges and clearing houses. Among its many offerings are services related to mortgage technology. The Complainant states that it has built a worldwide presence under the ICE mark in connection with various financial services for over twenty years. The Complainant contends that the disputed domain name is confusingly similar to its ICE mark because it is identical to the ICE mark and the Top Level Domain (TLD) “.loans” is a descriptive term that references ICE’s mortgage and loan services. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent does not offer goods or services in connection with the disputed domain name and is not commonly known by this name. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant alleges that, given ICE’s global reputation, the Respondent was or should have been aware of the ICE mark prior to registering the disputed domain name. The Complainant contends that the Respondent did not register the disputed domain name to actually offer services but, instead, registered and is using the disputed domain name for the bad-faith purpose of intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s ICE mark. B. Respondent The Respondent did not reply to the Complainant’s contentions.1 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of evidence in order to obtain transfer of the disputed domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses the potential impact of the Respondent’s default: “Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar The Complainant owns numerous registrations for the ICE trademark in the United States and around the world. As such, the Complainant has clearly established that it has rights in the ICE trademark. See section 1.2.1 of WIPO Overview 3.0 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”). The Complainant also has established that the disputed domain name is identical to the Complainant’s ICE trademark in that the disputed domain name incorporates the ICE trademark in its entirety. See section 1.7 of WIPO Overview 3.0 (“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”). Although the TLD is often disregarded when determining confusing similarity, where the TLD has some relevance to the Complainant’s trademark or goods or services, the TLD may be considered as part of the broader case context. See section 1.7 of WIPO Overview 3.0. Here, the Respondent’s use of the “.loans” TLD affirms the confusing similarity of the disputed domain name to the trademark, given that the Complainant’s trademark is used in connection with financial services, and the Respondent seems to have registered the disputed domain name precisely because it believed that the reproduction of the Complainant’s ICE trademark with the “.loans” TLD would trigger a sense of connection with the Complainant. The Panel therefore concludes that the disputed domain name is identical to the Complainant’s ICE mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once this burden is met, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (though the burden of proof remains on the Complainant at all times). If the Respondent does not satisfy its burden of coming forward with some evidence to rebut the Complainant’s prima facie showing, or if the Respondent fails to file a response at all, the Complainant’s prima facie showing will be sufficient to meet its burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. See section 2.1 of WIPO Overview 3.0. The Complainant has demonstrated that it has not granted the Respondent any right to use its ICE mark. The Complainant further notes that there is no evidence that the Respondent has been commonly known by the name “ice”. There is no evidence in the record that the Respondent may be using the disputed domain name in a legitimate way. The only apparent use that the Respondent is making of the disputed domain name is to redirect Internet users to the Complainant’s website. Such automatic redirection does not constitute a legitimate interest. See Halliburton Energy Services, Inc. v. Whois Privacy, Private by Design LLC / Chun Li Yung,WIPO Case No., D2019-3062. To the contrary, such redirection is often used by malevolent parties to suggest that the disputed domain name is connected to the Complainant in aid of phishing schemes or other fraudulent activity. See, e.g., WILO USA LLC v. Registration Private, Domains By Proxy, LLC, Austin D. Frankoski,WIPO Case No. D2021-1174. The Panel therefore concludes that the Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Because the Respondent has defaulted, the Respondent has failed to meet its burden of production to come forward with evidence of rights or a legitimate interest. For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent’s use of the disputed domain name for automatic redirection back to the Complainant’s website, in the absence of any other evidence that might support a finding of rights or legitimate interests, creates an inference that the Respondent registered and used the disputed domain name to confuse consumers as to the relationship between the Respondent and the Complainant. See section 3.1.4 of WIPO Overview 3.0 (“redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”). The creation of such confusion is paradigmatic bad faith under the Policy. See generally Policy, paragraph 4(b)(iv). Furthermore, although there can be legitimate uses for privacy and proxy registration services, “[p]anels … view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith.” See section 3.6 of WIPO Overview 3.0. This “nesting” of privacy services is known as a “Russian doll” scenario. See, e.g., Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd.,WIPO Case No. D2020-2323. In this case, the Respondent not only used a privacy service, but also provided a clearly false name (“You Are Not Alone”) and contact information (no street address and an invalid fax number 555-555-5555) once the privacy shield was lifted. These efforts to shield the Respondent’s true identify further supports an inference that the Respondent registered the disputed domain name for nefarious purposes, thus supporting a finding of bad faith. The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name David H. Bernstein 1 Given the absence of a response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email, (DHL) courier, and fax. The fax could not be delivered because the number provided by the Respondent was invalid. The Center was unable to send a courier package to the Respondent directly as the Respondent did not provide a valid street address. The courier package sent to the Respondent’s privacy service, located in Reykjavik, was delivered and signed for. Although it is not clear whether the Respondent received actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Sole Panelist
Date: June 11, 2021
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