The Complainant is CTC Innovations, LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is Super Privacy Service c/o Dynadot, United States / Wu Yu, China.
The disputed domain name <chicagotradingseminar.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2022. On February 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2022, 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 February 27, 2022, 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 amendment to the Complaint on February 28, 2022.
The Center verified that the Complaint together with the amendment to the 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 March 3, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2022.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 29, 2022. 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.
The Complainant is a proprietary trading firm with offices in Chicago New York, London and Hong Kong, It has been trading under its CHICAGO TRADING COMPANY trademark for over 20 years, and is a significant market participant in numerous derivative exchanges globally. As well as holding trademark registrations for CHICAGO TRADING COMPANY, the Complainant claims common law rights to CHICAGO TRADING, by virtue of its longstanding use.
The Complainant has provided the Panel with details of its trading activity, establishing considerable use of its CHICAGO TRADING COMPANY trademark, and has also provided the Panel with a schedule of trademark registrations of its CHICAGO TRADING COMPANY trademark in numerous jurisdictions, including United States Trademark Registration No. 4,116,966 (registered on March 27, 2012).
The disputed domain name was registered on July 10, 2021, and resolves to a website containing pay-per-click links to third party websites, including websites advertising or offering services competing with those of the Complainant.
The Complainant claims common law rights to CHICAGO TRADING by virtue of its registration and use of the CHICAGO TRADING COMPANY trademark for over 20 years and the use of the CHICAGO TRADING and CHICACO TRADING COMPANY trademarks on its marketing and public relations materials. The Complainant alleges that the disputed domain name is confusingly similar to its CHICAGO TRADING trademark, containing its trademark in its entirety, together with only the descriptive or non-distinctive element, “seminar".
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that it has never granted permission to the Respondent to use its CHICAGO TRADING trademark in connection with a domain name registration, or otherwise, and the Respondent is, in fact, not making any legitimate use of the disputed domain name.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith, as described above.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 and is being used in bad faith.
The Panel finds that the Complainant has sufficient trademark rights to its CHICAGO TRADING COMPANY trademark for the purposes of these proceedings.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and finds that it may be disregarded here.
The Complainant’s CHICAGO TRADING COMPANY trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Complainant's trademark, and the substitution of “company” for the word “seminar” does not prevent a finding of confusing similarity, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name at issue.
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Respondent did not advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Furthermore, the nature of the disputed domain name, incorporating two dominant elements of the Complainant’s trademark, misleads Internet users expecting to find a website associated with or endorsed by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1. Additionally, the use of the Complainant’s trademark to direct Internet users to a site with pay-per-click links that capitalize on the reputation and goodwill of the Complainant’s trademark does not amount to a bona fide offering. See section 2.9, WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name.
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s CHICAGO TRADING COMPANY trademark was deliberately appropriated in the disputed domain name are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds. Moreover, the Respondent’s use of a privacy service to masks its details and the Respondent’s failure to participate in these proceedings are additional factors that tend to support a presumption of bad faith.
It is well-established in prior decisions under the Policy that the use of a disputed domain name in connection with a website facilitating the offer of services competing with those of the complainant constitutes use of the disputed domain name in bad faith, and the Panel so finds in the circumstances of the present case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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, <chicagotradingseminar.com>, be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: April 12, 2022