The Complainant is Cboe Exchange, Inc., United States of America (“United States” or “U.S.”), represented by Baker & Hostetler, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States, / Wu Andy, Taiwan Province of China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 September 14, 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 on September 16, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent sent an informal email communication on September 24, 2021. The Center informed the Parties of its commencement of Panel Appointment process on October 12, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on October 20, 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 known securities and derivatives exchange in the United States. The Complainant offers products in multiple asset classes and geographies, including options, futures, United States and European equities, exchange-trade-products, and global foreign exchange. The products are offered internationally.
The Complainant owns a family of CBOE trademarks, including
- US trademark registration No. 5613242 CBOE (figurative mark), registered on November 20, 2018, in class 36;
- US trademark registration No. 2484436 CBOE, registered on September 4, 2001, in class 36;
Similar trademarks are registered in other countries, including major markets such as Canada, Japan, China, the European Union, and Mexico.
Additionally, the Complainant has owned and operated the domain name
The Complainant and its affiliated entities have been using the registered CBOE trademarks in connection with conducting securities and derivatives exchanges for the trading of securities and derivatives and related services since at least 1972.
The disputed domain name was registered on October 10, 2020. At the time the Complaint was filed, the disputed domain name was resolving to a website that purported to provide the same or similar services to Complainant.
At the time of the Decision, the disputed domain name resolves to a nginx-webserver dummy page.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the disputed domain name is confusingly similar to its trademarks, because it incorporates the trademark in its entirety and merely adds the random letter “x”. The Complainant argues that this circumstance is striking when compared to the logo used by the Respondent on the webpage with the disputed domain name. This logo is identical to the Complainant’s trademark followed by an “x” stylized as a checkmark. In addition, the use of the country code Top-Level Domain (“ccTLD”) “.io” is not suitable for creating distinction. The Complainant claims that it received actual complaints from customers who expressed confusion as to the legitimacy of the disputed domain name’s source.
The Complainant considers that the Respondent has no rights or legitimate interests to the disputed domain name as there is no evidence of any connection between the Respondent’s identity to it. The Complainant has not authorized, licensed, or endorsed the Respondent’s use of the CBOE trademarks. The Complainant is unaware of any legitimate companies in the financial services industry doing business under any similar name. On the contrary, the Complainant contends that the Respondent purposely creates consumer confusion to fraudulently obtain money from individuals when they mistakenly believe the disputed domain name to be associated with the Complainant.
Lastly, the Complainant also alleges that the Respondent registered or uses the disputed domain name in bad faith. The Respondent had constructive and likely actual notice of the Complainant’s trademarks. The Complainant contends that the Respondent’s unauthorized use of the Complainant’s mark for websites which purport to provide the same or similar services to the Complainant’s is an attempt to impersonate the Complainant by the Respondent and to steal customer information. This is supported by the instances of actual confusion the Complainant has been made aware of where customers are losing money. The Respondent’s attempt to conceal its true identity supports this view.
Therefore, the Complainant requests that the disputed domain name be transferred.
B. RespondentThe Respondent stated in his informal email of September 24, 2021, that he would give up the domain name as soon as technical and organizational issues allowed him to. No further statements, in particular in relation to the Complainant's allegations, were made.
6. Discussion and FindingsIn view of the close similarity of the requirements of the Policy and the Uniform Domain-Name Dispute- Resolution Policy (“UDRP”), therefore, the Panel will draw on the principles established under the UDRP as appropriate.
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Panels have typically treated a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed or like in this case, providing the promise to change the domain as soon as technically and organisationally possible) similar to a respondent’s default. It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a 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 (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1 The same is valid in case of “informal responses”.
A Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and
(iii) the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark COEB, to which the Complainant has established rights through registration.
The disputed domain name incorporates the entirety of the Complainant’s trademark CBOE, followed by the letter “x”, and the ccTLD “.io”
Section 1.8 of the WIPO Overview 3.0, section 1.8 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The combination of CBOE and “x” is meaningless, the letter “x” itself has no apparent function in the disputed domain name, so that it counts as an additional term in the meaning of section 1.8 of the WIPO Overview 3.0.
TLDs are generally disregarded, when evaluating the identity or similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD (see section 1.11 of the WIPO Overview 3.0).
The Complainant’s argument that the logo used on the website was similar to the Complainant’s trademark was not to be addressed and therefore not ascertainable due to a lack appropriate evidence (the screenshots provided do not show the Respondent's logo in the form complained of).
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has only filed an informal response and thus did not deny the Complainant’s assertions, nor has it brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never has authorized the Respondent to use its trademark as part of the disputed domain name.
As will be explained in section 6C, the Panel finds that the disputed domain name was used for fraudulent purposes. Such usage cannot constitute bona fide use. Furthermore, at the time of the decision the website resolves to a dummy page without any substantive content.
The Complainant therefore made a prima facie case that the Respondent lacks rights or legitimate interests to which the Respondent failed to respond.
C. Registered or Used in Bad FaithThe Complainant has used the CBOE name for many decades and has held trademark rights since at least 1972. The Complainant is internationally active and well known in the financial/trading sector.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith, but they do not constitute an exhaustive list. The fourth circumstance is as follows:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
The disputed domain name was registered in 2020 and incorporates the Complainant’s trademark in its entirety with the addition of letter “x”. The Complainant provided sufficient evidence that the disputed domain name resolved at least until September 9, 2021 to a website that purports to provide the same or similar services to the Complainant. Additionally, the Complainant provided sufficient evidence that some of its customers transferred money to the Respondent in the belief that the disputed domain name belonged to the Complainant, and they were using its services. As a result, these customers lost their money, so the Respondent’s services can likely be qualified as fraudulent.
Therefore, the Panel finds that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion to the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a service on this website, within the terms of paragraph 4(b)(iv) of the Policy.
In addition, the Respondent’s attempt to conceal its true identity by using a proxy service supports this view.
Furthermore, the fact that the disputed domain name resolves to a dummy page at the moment of this decision does not prevent a finding of bad faith in these circumstances (see section 3.3 of the WIPO Overview 3.0).
For these reasons, the Panel considers that the Respondent’s conduct constitutes bad faith registration and use of the disputed domain name.
7. DecisionFor 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
Christian Gassauer-Fleissner
Sole Panelist
Date: November 2, 2021
1 Noting the substantial substantive similarities between the Policy and the UDRP, the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.