The Complainant is Intercontinental Exchange Holdings, Inc., United States of America, represented by DLA Piper US LLP, United States of America (“United States”).
The Respondent is 殷磊 (Yin Lei), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on May 7, 2021. On May 7, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 7, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on June 29, 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, Intercontinental Exchange Holdings, Inc., is an international operator of global exchanges and clearing houses. It first began operating as a transparent market for pricing for electric power companies in 1997. It also provides various other financial and technology services, including, mortgage technology products and services. The Complainant has used the ICE mark and its variations in connection with exchanges, clearing houses, and other financial and technology services in the United States and around the world through its licensees and authorized users. The Complainant owns a range of trade mark registrations for its ICE mark worldwide, including Chinese Registration No. 11057585 registered on October 21, 2013 in class 36, United States Registration No. 2530330 registered on January 15, 2002 in class 36 and United States Registration No. 2978085 registered on July 26, 2005 in class 36. The Complainant advertises its business to customers through its website at “www.ice.com”. It also promotes its products and services related to mortgages and home loans under the phrase “ICE Mortgage Technology” through its website at “www.icemortgagetechnology.com”. The Respondent is 殷磊 (Yin Lei), China. The disputed domain names The Complainant contends that the disputed domain names are confusingly similar to the ICE mark as they fully incorporate the well-known ICE mark. The disputed domain names were registered well after its registration and first use of the ICE mark. The additions of the misspelled terms “mortgage” and “technology” to the disputed domain names constitute typosquatting and are insufficient to distinguish them from the ICE mark and the ICE MORTGAGE TECHNOLOGY mark. Further, the Complainant asserts that the addition of the terms “mortgage” and “technology” exacerbate the likelihood of confusion with the ICE mark because these terms are descriptive of the type of services it offers. The Complainant further alleges that the Respondent was familiar with the well-known ICE mark at the time of registration of the disputed domain names. The websites at the disputed domain names are parked pages which do not constitute a bona fide offering of goods or services and suggests that the Respondent does not possess a legitimate right or interest in the disputed domain names. Further, the Respondent is not commonly known by the disputed domain names, and the Complainant has not licensed or otherwise permitted the Respondent to use the ICE mark, or to apply for or use any domain name incorporating the mark. The Complainant finally asserts that the Respondent was or should have been aware of the ICE mark well prior to registering the disputed domain names due to the worldwide reputation of the ICE mark. It appears that the Respondent registered the disputed domain names for the bad faith purpose of intentionally attempting to attract users to its websites by creating a likelihood of confusion with the ICE mark. The registration of the disputed domain names constitutes typosquatting because they merely remove a letter from the ICE MORTGAGE TECHNOLOGY mark, which strongly demonstrates the Respondent’s bad faith use and registration of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreements as used by the registrant for the disputed domain names is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) the Complainant had submitted evidence showing that the registration agreement is in English; (b) the disputed domain names incorporate the Complainant’s ICE mark and the misspelled words “mortgage” and “technology” demonstrating the Respondent either speaks or is familiar with the English language; and (c) the Complainant has submitted a significant amount of evidence demonstrating that the Respondent registered and is using the disputed domain names in bad faith. Allowing the proceeding to proceed in Chinese would give the Respondent an advantage and would force the Complainant to incur additional costs and expenses in seeking local assistance in China for handling the proceeding. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of English words for the disputed domain names indicates some familiarity with the English language; (c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2. Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the ICE mark. The Panel notes that the Complainant also relies on the similarities between the disputed domain names and the ICE MORTGAGE TECHNOLOGY mark. As the Complainant does not adduce any evidence to demonstrate its registered trade mark rights in “ICE Mortgage Technology”, the Panel treats this as the Complainant’s assertion of its unregistered or common law trade mark rights in the ICE MORTGAGE TECHNOLOGY mark. According to section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the complainant must provide relevant evidence such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys to show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. In the present case, there is some information provided by the Complainant about its use of the ICE MORTGAGE TECHNOLOGY mark through its website at “https://www.icemortgagetechnology.com/”. However, it appears that the Complainant does not adduce further evidence demonstrating the acquired distinctiveness of the ICE MORTGAGE TECHNOLOGY mark. In any event, given the Panel’s findings on the similarities between the ICE mark and the disputed domain names, it is unnecessary for the Panel to determine whether the evidence before it is to support the Complainant’s unregistered rights in the ICE MORTGAGE TECHNOLOGY mark. The Panel notes that both disputed domain names are comprised of the ICE mark in its entirety. The positioning of the ICE mark in front of the disputed domain names makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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. See section 1.7 of the WIPO Overview 3.0. The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the ICE mark. Further, the additional misspelled words “mortgage” and “technology” do not preclude a finding of confusing similarity between the ICE mark and the disputed domain names. It is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other terms that describe or refer to part of the complainant’s business in the domain name does not eliminate the confusing similarity of the domain name from the complainant’s trade mark under the first element of the Policy. The addition of the misspelled words “mortgage” and “technology”, referring to the Complainant’s mortgage technology products and services, does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s ICE mark. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the ICE mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The disputed domain names resolve to parked pages comprising pay-per-click advertising links that divert consumers from the Complainant’s website. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain names or reasons to justify the choice of the term “ICE”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in them. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s ICE mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s ICE mark had been registered well before the registration of the disputed domain names. Through extensive use and advertising, the Complainant’s ICE mark is known throughout the world. Search results using the key words “ICE” and “mortgage” on the search engines direct Internet users to the Complainant and its products and services, which indicates that an exclusive connection between the ICE mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s ICE mark when registering the disputed domain names or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names incorporate the Complainant’s famous ICE mark plus the misspelled version of the descriptive words “mortgage” and “technology” that are related to the Complainant’s mortgage technology products and services, thus, creating a presumption of bad faith and which reinforces the likelihood of confusion. Section 3.5 of the WIPO Overview 3.0 states that “[p]articularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests)”. The Panel notes that the disputed domain names resolve to parked pages comprising pay-per-click advertising links that divert Internet users to various mortgage and loan services. The Panel finds the use of the confusingly similar disputed domain names to lure Internet users to websites hosting links to providers of competing services is evidence of bad faith. See Sodexo v. 杨智超 (Zhi Chao Yang),WIPO Case No. D2020-1171. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 names Rachel Tan
Sole Panelist
Date: July 12, 2021
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