WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stoxx AG v. Rex Huang Case No. D2008-1806 1. The Parties
The Complainant is Stoxx AG of Zürich, Switzerland represented by Meisser & Partners, Switzerland.
The Respondent is Rex Huang of Tainan, Taiwan, Province of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Blue Razor Domains. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2008. On November 24, 2008, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the disputed domain name. On November 24, 2008, Blue Razor Domains transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2008.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 22, 2009. 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 has submitted evidence that it is the owner of the following trademark registrations:
STOXX, classes 9, 16, 35, 36, 38, 41 and 42 with International registration No. 696866 dated June 9, 1998.
STOXX, class 9, 16, 35, 36, 38, 41 and 42 with Community trademark registration No. 001231646 dated September 12, 2000.
STOXX, class 35 with Taiwanese registration No. 00178311, dated October 26, 2001.
STOXX, class 36 with Taiwanese registration No. 00172727, dated October 26, 2001.
EURO STOXX, with International registration No. 699180, dated April 2, 1998.
STOXX 50, 9, 16, 35, 36, 38, 41 and 42 with International registration No. 698166, dated June 9, 1998.
EURO STOXX 50, 9, 16, 35, 36, 38, 41 and 42 with International registration No. 702730, dated July 29, 1998.
EURO STOXX, 9, 16, 35, 36, 38, 41 and 42 with Community trademark registration No. 001396407, dated February 5, 2001.
STOXX 50, 9, 16, 35, 36, 38, 41 and 42 with Community trademark registration No. 001396381, dated January 19, 2001.
EURO STOXX 50, 9, 16, 35, 36, 38, 41 and 42 with Community trademark registration No. 001396415, dated January 19, 2001.
STOXX 600, class 35, 36 and 41 with International registration No. 964739, dated April 30, 2008.
The Respondent registered the disputed domain name on January 27, 2008. 5. Parties' Contentions A. Complainant
The Complainant is a joint venture of the German Deutsche Börse AG, Dow Jones, SBF-Bourse de Paris and SWX Swiss Exchange. The Complainant developed the leading European stock index family STOXX, similar to the Dow Jones-Index for US-American stocks, Nikkei-Index for Japanese stocks and DAX for German stocks. Together with Dow Jones, the Complainant operates as a globally integrated index provider.
In February 2008, the Complainant learned from a watching report that the Respondent had registered the disputed domain name on January 27, 2008. The disputed domain name is parked free with GoDaddy. The Respondent is using the website to which the disputed domain name resolves to divert customers to third party websites offering services in the fields of finance and stock exchange. Consumers would expect to find a website at “” that is somehow associated with or sponsored by the Complainant.
The Complainant sent a written letter to the Respondent on February 25, 2008 requesting that the Respondent cancel the disputed domain name. The Respondent did not reply or react in any way.
The Complainant is the owner of numerous trademark registrations for STOXX. Although the Complainant registered the trademark STOXX 600 after the Respondent registered the disputed domain name, the Complainant was using the index STOXX 600 before the creation of the disputed domain name.
The disputed domain name is identical to the trademark STOXX 600 and confusingly similar to the other trademarks of the Complainant. The component STOXX in the disputed domain name is identical to the Complainant's trademark STOXX. The combination of STOXX with the number 600 does not have any effect on this confusing similarity. The incorporation of a trademark in its entirety in a domain name is, according to previous cases, sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
The Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's trademark has been registered since 1998 and the Respondent must have been aware of the trademark.
The Respondent is using the disputed domain name to attract consumers to its own website in order to collect financial remuneration for relevant clicks. Such use is not sufficient to establish rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy.
Furthermore, it can be presumed that the Respondent has not been commonly known by the disputed domain name. The Respondent has no relation to the Complainant and was never authorized nor licensed by the Complainant to use the trademark.
It is obvious that the Respondent was aware of the Complainant's trademarks at the time of the disputed domain name registration. The STOXX 600 was already known in the financial world before the registration of the Respondent's domain name. The fact that the Respondent offers links to websites in the field of finance and stock exchange shows that the Respondent was aware of the Complainant's trademarks. The Respondent is preventing the Complainant from using its trademark STOXX 600 in a corresponding domain name.
The Respondent registered the disputed domain name in order to attract, for commercial gain, Internet users to his website. The Complainant is of the opinion that the disputed domain name is registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. However, the Respondent did send a one line e-mail communication on December 21, 2008 indicating that it would transfer the disputed domain name to the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks STOXX, STOXX 600, STOXX 50, EURO STOXX and EURO STOXX 50.
Apart from the trademark STOXX 600 which was registered after the disputed domain name, all the trademark registrations predate the registration of the disputed domain name .
The disputed domain name incorporates the trademark STOXX in its entirety. The disputed domain name contains an addition of the number 600. The ability for the number 600 to distinguish the disputed domain name from the trademarks of the Complainant is limited, especially when considering that the Complainant is the owner of other trademarks consisting of the name STOXX followed by a number.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark STOXX and STOXX 50 and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice to respondent of the dispute, respondent's 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) respondent (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) respondent is 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.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademarks in connection with the disputed domain name which is confusingly similar to the Complainant's trademarks STOXX and STOXX 50.
Although provided the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name. The Respondent did however send a short one line e-mail message on December 21, 2008, indicating that it would transfer the disputed domain name to the Complainant. Subsequently, when asked for the authorization code for the disputed domain name, the Respondent did not reply. It is the opinion of the Panel that the Respondent's e-mail message above suggests a lack of rights or legitimate interests with respect to the disputed domain name.
From the submitted evidence in this case, it is clear that the Respondent's website, to which the disputed domain name resolves, contains numerous sponsored commercial links to third party websites operating in the same field as the Complainant. The Respondent's use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the respondent has registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 respondent's web site or location or of a product or service on respondent's web site or location.
The Complainant's registered trademarks STOXX and STOXX 50 predate the registration of the disputed domain name and the circumstances in the case before the Panel suggest that the Respondent was aware of the Complainant's trademarks when registering and using the disputed domain name. This is emphasized by the fact that the Respondent's website contains numerous links to websites promoting third parties providing services similar to those offered by the Complainant. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous case law. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.
The submitted evidence in the case before the Panel indicates that the disputed domain name has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name has been registered and used in bad faith. 7. Decision
For 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, be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Dated: February 5, 2009
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