WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CTC Innovations, LLC v. On behalf of ctc-vietnam.com owner, Whois Privacy Service / Elizabeth B Allen
Case No. D2021-2224
1. The Parties
Complainant is CTC Innovations, LLC, United States of America (“United States” or “U.S.”), represented by Neal, Gerber & Eisenberg, United States.
Respondent is On behalf of ctc-vietnam.com owner, Whois Privacy Service, United States / Elizabeth B. Allen, United States.
2. The Domain Name and Registrar
The disputed domain name <ctc-vietnam.com> (the “Domain Name”) is registered with Amazon Registrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9 and July 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on August 19, 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
Complainant is a proprietary trading firm with offices in Chicago, New York, London, and Hong Kong, China.
Relevant to this matter Complainant owns the following trademark registrations:
- CTC, U.S. Reg. No. 4040810, registered on October 18, 2011, in class 36.
- CTC, United Kingdom Reg. 3422665, registered on November 18, 2019, in classes 36 and 38;
- CTC, European Union Reg. 009886086, registered on September 22, 2011, in classes 36 and 38; and
- CTC, Chinese Reg. 26300632, registered on October 14, 2019, in class 36.
Respondent is an individual allegedly living in Clute, Texas, United States.
On March 24, 2021, the Domain Name was registered with the Registrar. The Domain Name does not resolve to an active website.
5. Parties’ Contentions
As background, Complainant is a proprietary market-making firm with floor and electronic operations in the derivatives market. Complainant describes itself as a significant market participant on numerous derivatives exchanges globally. Complainant’s corporate name is Chicago Trading Company, which is abbreviated as CTC. Complainant contends that it has been using the CTC mark for over 20 years and it has subsequently appeared prominently in Complainant’s customer facing materials, including its website and social media pages. Complainant alleges that it and its affiliates own registered trademarks and service marks for the CTC mark and variants, including device marks, in numerous jurisdictions, and all of those filings prominently include the letters “ctc”. A list of these registrations, including the relevant registration numbers and representative registration certificates, were attached to the Complaint as Exhibit 4. Collectively, Complainant’s registered and unregistered trademark rights in CTC are referred to as the “CTC Mark”.
Complainant alleges that Respondent registered the Domain Name in order to trade upon the goodwill associated with the CTC Mark. Complainant further contends that there is a recent increase of Internet scams originating in Viet Nam and asserts that the use of the designation CTC together with the term “vietnam” is intended to be used in connection with such fraud, which also suggests bad faith intent. Although the Domain Name is being passively held and does not currently resolve to an active site, Complainant contends that use of the Domain Name will undoubtedly lead those in the financial services sector and other members of the public to believe that it is approved by, affiliated with or sponsored by Complainant, when that is not the case.
Complainant asserts that it has never consented to the registration of the Domain Name by Respondent. In fact, on April 22, 2021, Complainant sent a demand letter to Respondent and the Registrar notifying them about the infringement and demanding that Respondent transfer the Domain Name to Complainant. Complainant alleges that it has not received a substantive response.
With respect to the first element of the Policy, Complainant alleges that the Domain Name is virtually identical and confusingly similar to the CTC Mark because it consists of Complainant’s registered CTC Mark plus the geographically term, “vietnam”. Complainant points out that the addition of the term “vietnam” may increase confusion between the Domain Name and the CTC Mark because Complainant has rights in its CTC Mark around the world, and it suggests that Complainant may be a target to an Internet scheme located in Viet Nam.
With respect to the second element of the Policy, Complainant asserts that Respondent has no legal relationship with Complainant through which Respondent can claim any rights to the Domain Name. Complainant contends it has not consented to Respondent’s registration of the Domain Name. Complainant also asserts that Respondent has no legitimate rights or interest in the Domain Name because Respondent is not referred to or commonly known as the Domain Name. In addition, Complainant alleges that Respondent has not made, nor is it making, a legitimate noncommercial or fair use of the Domain Name. Instead, Complainant alleges that Respondent is passively holding the Domain Name, and thus, Respondent has not used the Domain Name in connection with the bona fide offering of goods or services.
With respect to the third element of the Policy, for the following reasons Complainant asserts that Respondent has registered and used the Domain Name in bad faith. First, Complainant asserts that it is implausible that Respondent innocently registered the Domain Name without a design to exploit its similarity to the CTC Mark. Further, Complainant asserts Respondent had constructive knowledge of CTC’s long-standing rights in the CTC Mark when Respondent registered the Domain Name in March 2021 by virtue of Complainant’s United States trademark registration. Second, Complainant asserts that by registering and maintaining a registration that is identical to the CTC Mark, when Respondent is not known under that mark, and Respondent is not using it in connection with any business under the name, the only reasonable conclusion is that Respondent intentionally attempted to attract, for commercial gain, Internet users to the site at issue by creating a likelihood of confusion. Third, Complainant asserts that Respondent’s bad faith is also evidenced by its failure to respond to Complainant’s demand letter. Fourth, Complainant claims that Respondent’s bad faith is supported by the fact that Respondent used a proxy service. Lastly, Complainant alleges that Respondent’s bad faith is also evidenced by the fact that Respondent provided false contact information to the Registrar of the Domain Name in an attempt to conceal its identity.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Here, Complainant has provided evidence that the CTC Mark has been registered in the United States, United Kingdom, China, and the European Union.
Here, the Domain Name contains the CTC Mark plus the additional word, “-vietnam”. It is well established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. In fact, multiple panels have found that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart., WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda, WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437. The addition of “-vietnam” does not prevent Complainant’s CTC Mark from being recognizable in the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s CTC Mark in which Complainant possesses valid trademark rights under the UDRP. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Complainant contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized or permitted Respondent to register the Domain Name, and that Respondent has failed to make any use of the Domain Name and, instead, that the Domain Name may have been registered to be used in connection with a fraudulent scheme.
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that according to the Registrar’s verification Respondent’s name is “Elizabeth B. Allen”, and the Panel therefore finds, based on the record, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name.”)
It is likewise undisputed that Complainant has never licensed or otherwise provided authorization for Respondent to use the CTC Mark or to register the Domain Name.
Given that the Domain Name consists of a three-letter abbreviation, there could have been a possibility of an explanation by Respondent asserting that it possessed legitimate interests in the letters “ctc” and that it had a connection to Viet Nam. However, the record in this matter is devoid of any such link. Instead, the likely fake registration details indicated that Respondent lives in Texas, United States, and has no connection to a business or other apparent legitimate reason to use the letters “ctc”. The silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the domain name, as there is no obvious legitimate connection with the disputed domain name, and Complainant’s prima facie case remains unrebutted. See, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be inferred in certain circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Lastly, the Panel finds that Respondent is not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c), as the Domain Name resolves to an inactive webpage.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward with evidence to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent’s registration and use of the Domain Name was in bad faith and is evidenced by (i) the fact that Respondent knew, had constructive knowledge of, or should have known of Complainant’s trademark rights in the CTC Mark; (ii) Respondent is not actually using or is passively holding the Domain Name; (iii) Respondent utilized a proxy service and provided fake contact information; and (iv) Respondent never responded to Complainant’s demand letter.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known or had constructive notice of Complainant’s CTC Mark when Respondent registered the Domain Name. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondents’ choice to register the Domain Name. With no response from Respondent, this claim is undisputed and the Panel can infer bad faith particularly in light of the other elements of bad faith discussed below.
Furthermore, the fact that the Domain Name does not resolve to a website and is being passively held does not prevent a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. Section 3.3 of the WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Complainant submitted evidence that the CTC Mark has been used for more than 20 years in the United States and, in other countries in which Complainant operates. Respondent has not offered any evidence to rebut this conclusion. Furthermore, by virtue of its failure to respond to the Complaint, Respondent provided no evidence of its intended use of the Domain Name. In fact, Respondent is not using the Domain Name in any manner to demonstrate a bona fide use or potential use. In addition, Respondent concealed its true identity by using a proxy service that employed false contact information. In light of these factors, the Panel finds that Respondent’s passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by Respondent.
For the reasons set forth above, the Panel finds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under 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 Domain Name <ctc-vietnam.com> be transferred to Complainant.
John C. McElwaine
Date: September 2, 2021