WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NYSE Group, Inc. and LIFFE Administration and Management v. Joseph Perry Case No. D2009-0166 1. The Parties
The Complainants are NYSE Group, Inc. of New York, United States of America and LIFFE Administration and Management of London, United Kingdom of Great Britain and Northern Ireland. The Complainants are represented by Baker Botts, LLP of New York, United States of America (“United States or U.S.”).
The Respondent is Joseph Perry of West Ind, Grenada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2009. On February 6, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 6, 2009, GoD, Inc. 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 February 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 6, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 13, 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 first Complainant, NYSE Group, Inc. (hereinafter “NYSE”), is the successor-in-interest to the New York Stock Exchange, Inc., which was founded and organized in New York City in 1792. NYSE is primarily engaged in the operation of a national and international market for the trading of securities. In addition, NYSE provides many ancillary and educational services to traders, investors and the public in general. NYSE is a leading provider of securities listing, trading and information products and services, with a well established reputation of integrity, permanence, liquidity, breadth and the quality of its regulation.
NYSE and its predecessor, the New York Stock Exchange, Inc., had been continuously using the NYSE trademark since early 1863, in connection with its operation. NYSE owns the rights in the NYSE, NYSE & Design and NYSE E-BROKER & Design trademarks. For example, NYSE is the owner of U.S. Federal trademark registration number 909350 for the NYSE trademark with a filing date of October 15, 1969.
NYSE also filed for the registration of the trademark NYSE LIFFE in several different countries. For example, NYSE owns U.S. trademark application number 77562290 for the NYSE LIFFE with a filing date of September 4, 2008.
The second Complainant, LIFFE Administration and Management (hereinafter “LIFFE”), is a wholly owned subsidiary of NYSE Euronext and a UK Recognized Investment Exchange.
LIFFE has been using the LIFFE trademark in association with its operation of a securities exchange and related stock market services since as early as 1982. LIFFE is the owner of the LIFFE, LIFFE CONNECT & Design and LIFFE CONNECT trademark. For example, LIFFE is the owner of U.S. Federal trademark registration number 2754771 for the LIFFE trademark with a filing date of November 17, 1999. The LIFFE trademark was registered in multitude countries worldwide.
On September 8, 2008, NYSE Euronext, the parent of both Complainants, launched NYSE LIFFE. NYSE LIFFE, a global distribution network with leading edge technology and broad range of risk management products, currently offers trading in futures on gold and silver.
NYSE promotes its services offered under the mark NYSE LIFFE on its website.
Both Complainants participated in the marketing, advertising and promotion of the many products and services sold or rendered under the NYSE, LIFFE and NYSE LIFFE marks and over the nature and quality of these products and services. As a result, the NYSE, LIFFE and NYSE LIFFE marks have acquired an immense goodwill in the U.S., Europe and around the world. The marks NYSE, LIFFE and NYSE LIFFE
have been exclusively associated with their respective owners, and their services acquired consumer recognition.
The Respondent registered the disputed domain name on September 8, 2008. The disputed domain name is a parked web page that directs people to a Google search page or to a Google e-mail service see and “www.”. 5. Parties' Contentions A. Complainant
The Complainants argue that the disputed domain name is confusingly similar to the trademarks owned by the Complainants, seeing that it incorporates the NYSE trademark with the LIFFE trademark and is identical to the NYSE LIFFE trademark application.
The Complainants further argue that they have exclusive rights to the NYSE, LIFFE and NYSE LIFFE marks and that these marks are widely recognized with the Complainants and the Complainants' operation. Furthermore, the Complainants argue that they have not provided the Respondent with a license, permission or authorization to use or otherwise dispose of the NYSE, LIFFE and NYSE LIFFE marks or to the disputed domain name.
The Complainants further argue that the Respondent's website is being used to intentionally direct Internet users from the Complainants' products and services and that such use amounts to bad faith.
The Complainants further argue that the fact that the domain name has not been used in any way and is a parked page also indicates the Respondent's bad faith.
The Complainants further argue that the Respondent acted in bad faith when refusing to respond to the Complainants' Cease and Desist letters.
For all of the above reasons, the Complainants request transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainants are the owners of numerous trademarks over the NYSE and LIFFE marks in various jurisdictions. For example, the Complainants own US Federal trademark registration number 909350 for the NYSE trademark with a filing date of October 15, 1969 and U.S. Federal trademark registration number 2754771 for the LIFFE trademark with a filing date of November 17, 1999.
In addition, NYSE filed an application for the registration of the mark NYSE LIFFE in several different countries. For example, NYSE owns U.S. trademark application number 77562290 for the NYSE LIFFE with a filing date of September 4, 2008.
The only difference between the Complainants' trademarks NYSE and LIFFE and the disputed domain name is that the disputed domain name comprises the combination of both marks. The disputed domain name is identical to NYSE trademark application over the mark NYSE and LIFFE.
Combining marks will not alleviate any likelihood of confusion. In similar cases, the combination of two marks was considered insufficient to avoid confusion between a disputed domain name and the trademarks. See Pharmacia & Upjohn AB v. M Inc.,WIPO Case No. D2000-0446 and Nintendo of America Inc v. Pokemon,WIPO Case No. D2000-1230. “The addition of one world famous trademark to another world famous trademark does not create a new or different mark in which the Respondent has rights”. See also Saab Automobile AB et al. v Joakim Nordberg,WIPO Case No. D2000-1761; Audi AG v. Hans Wolf,WIPO Case No. D2001-0148.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainants have rights. B. Rights or Legitimate Interests
Once the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case the Complainants allege that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights.
The Panel finds the Complainants have established such prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the NYSE or the LIFFE trademarks, a variation or a combination thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, and in view of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive that the Respondent registered the disputed domain name in bad faith where the trademarks owned by the Complainants were registered long before the registration of the disputed domain name. The Complainants submitted evidence, which show that the Complainants' trademarks NYSE and LIFFE were registered and are well known in the securities exchange and related stock market services; and that their trademarks are well recognized publicly. It is unlikely that the Respondent did not recognize or was not familiar with the Complainant's trademarks at the time of registration.
Moreover, the fact that the Respondent registered the disputed domain name on the very same day that the Complainants launched NYSE LIFFE future trading exchange and NYSE filed an application for the trademark registration of the NYSE LIFFE mark is further indication of bad faith registration.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
A review of the website operating under the disputed domain name indicates that the disputed domain name leads to a parked webpage and referring to a Google search page and email service. This service is likely to create confusion as to the source, sponsorship, affiliation or endorsement of the web site with the trademarks of the Complainants. Lexicon Marketing Operating Luxembourg S.A.R.L v. Ingles Total S,A, de C.V.,WIPO Case No. D2006-0200; F. Hoffman-La Roche AG v. Softech Ltd., DNS Administrator (barry2),WIPO Case No. D2007-1706
On October 24, 2008 and November 18, 2008 the Complainants' counsel sent cease and desist letters to the Respondent. The Respondent failed to answer. The Respondent's failure to answer these letters is further indication of bad faith registration and use of the disputed domain name. See RRI Financial, Inc v. Ray Chen,WIPO Case No. D2001-1242.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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 disputed domain name, be transferred to the Complainants.
Jonathan Agmon
Sole Panelist
Dated: March 22, 2009
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