The Complainant is Cboe Exchange, Inc., United States of America (“United States”), represented by Baker & Hostetler, LLP, United States.
The Respondent is P.J Marriott & M Riddell, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2021, the Registrar transmitted by email to the Center its verification response stating that the Respondent was not the registrant of the disputed domain name, and providing the registrant’s name and contact details. The Center sent an email communication to the Complainant on October 4, 2021, providing the registrant name and contact information disclosed by the Registrar.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 22, 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 BackgroundThe Complainant is a securities and derivatives exchange that is highly regarded in the United States and throughout the world. The Complainant offers trading across a diverse range of products, in multiple asset classes and geographies, including options, futures, United States and European equities, exchange-traded products, and global foreign exchange.
The Complainant owns numerous registrations around the world for trademarks consisting of or containing CBOE, including International Trademark Registration No. 1374822 (registered on September 27, 2017) and Australian Trademark Registration No. 1887458 (entered on the register on June 6, 2018; registered from September 27, 2017) for the word trademark CBOE.
The Complainant owns and operates the domain name
The disputed domain name was registered on June 15, 2018. The Complainant has provided a screenshot, taken on September 23, 2021, showing that the disputed domain name resolved to a webpage stating “cboe.com.au is available on GoDaddy Auction. Get This Domain”, followed by what appear to be pay-per-click links with titles that include “Buying Silver and Gold”, “Bitcoin Purchase Online”, “Buy Stock”, and “Otc Stock Trading”. The Complainant has also provided a screenshot of the GoDaddy Domain Name Search webpage, taken on September 23, 2021, stating that the disputed domain name “is available Minimum Offer $15,000” – which presumably is AUD 15,000.
As of the date of this decision, the disputed domain name resolves to a webpage at which appear links with titles that include “Trade Stocks”, “Option Trading”, and “Commodities Trading”, which resolve to pages containing advertisements for such products and services. The webpage also contains a “Get This Domain” button, which links to a webpage at which the disputed domain name is stated to be available, with the minimum offer being “$16,500” – which presumably is AUD 16,500.
5. Parties’ Contentions A. ComplainantThe Complainant made the following contentions to establish that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant and its affiliated entities have been using the registered CBOE trademark in connection with conducting securities and derivatives exchanges for the trading of securities and derivatives, and for related services, since at least as early as 1972. The Respondent uses the Complainant’s full CBOE trademark and merely adds the Second-Level Domain (“2LD”) identifier “.com” and the country-code Top-Level Domain (“ccTLD”) identifier “.au”, and the use of such domain suffixes does not create a meaningful distinction from the Complainant’s trademark.
The Complainant made the following contentions to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized, licensed, or endorsed the Respondent to use its trademark. According to the WhoIs information, the Respondent does not identify itself as CBOE or anything related to such terms, but rather is “P.J. MARRIOTT & M RIDDELL”. There is, therefore, no basis to find that the Respondent is commonly known by the disputed domain name. The disputed domain name resolves to a parked webpage displaying click-through links to third-party websites, and includes a link to “Get This Domain” through GoDaddy Auctions. As the disputed domain name resolves to a webpage with links to third-party commercial services, it follows that the Respondent’s use of it can be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Complainant made the following contentions to establish that the disputed domain name was registered and is being used in bad faith. The Respondent’s use of a click-through parked webpage that resolves from the disputed domain name (which is identical to the Complainant’s trademark) provides evidence that the Respondent is attempting to attract Internet users to its website by creating confusion with the name of the Complainant, and is doing so for commercial reward. The disputed domain name is offered for sale through the link provided on the webpage resolving from the disputed domain name for $15,000 [currency unspecified], an amount exorbitantly in excess of the likely out-of-pocket expenses incurred by the Respondent in registering the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identity of the Respondent and notice to the RespondentThe Complaint named the Respondent as “P.J. MARRIOTT & M RIDDEL”, this being the text in the Registrant field returned from a WhoIs search conducted by the Complainant on the website of the Registrar. In response to the Center’s request for registrar verification in connection with the disputed domain name, the Registrar stated: “The respondent is not the registrant of the domain name.” However, in the WhoIs information supplied by the Registrar in its response, the registrant is listed as “P.J. MARRIOTT & M RIDDEL” – i.e., the entity named as the Respondent in the Complaint.
Given the clear identification of the registrant contained in the Registrar’s WhoIs information that it supplied to the Center, the Panel concludes that the Registrar’s response that the Respondent “is not the registrant of the disputed domain name” is an error – and that the Registrar’s response should have been, and was meant to be, that the Respondent “is the registrant of the disputed domain name”. Accordingly, the Panel finds that the correct Respondent has been named in the Complaint.
Moreover, the Panel has confirmed that all of the Center’s communications concerning the Complaint were made using the contact information provided by the Registrar in its response to the Center’s request for registrar verification of the disputed domain name. Accordingly, the Panel finds that the required notifications were correctly made to the correct Respondent.
B. Identical or Confusingly SimilarOnce the 2LD and ccTLD identifiers are ignored (which is appropriate in this case), the disputed domain name consists solely of the whole of the Complainant’s registered word trademark CBOE. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
C. Rights or Legitimate InterestsThe Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its CBOE trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.
The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a webpage that contains what appears to be pay-per-click links for various products and services in the financial services and investment sectors. Given the identity of the disputed domain name to the Complainant’s trademark, the absence of any relationship between the Respondent and the Complainant, and the clear risk of an implied false affiliation with the Complainant, the Respondent’s use of the disputed domain name in this way is neither a bona fide use nor a legitimate noncommercial or fair use.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered or Subsequently Used in Bad FaithThe disputed domain name was registered a number of years after the Complainant first registered its CBOE trademark. The evidence on the record provided by the Complainant, and confirmed by the Panel, indicates that the Respondent has used the disputed domain name to resolve to a website that contains what appears to be pay-per-click links, and has offered to sell the disputed domain name for $15,000 or $16,500 (both presumably in AUD, which would be sums well in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name). Both the Respondent’s use of the disputed domain name and its offering of the disputed domain name for sale are evidence of the registration and use of the disputed domain name in bad faith, according to paragraphs 4(b)(iv) and 4(b)(i), respectively, of the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
Andrew F. Christie
Sole Panelist
Date: December 6, 2021