WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deutsche Börse AG v. EURE-X GmbH SW Case No. D2009-1032 1. The Parties
Complainant is Deutsche Börse AG of Frankfurt, Germany, represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany.
Respondent is EURE-X GmbH SW of Espoo, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2009. On August 3, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 13, 2009 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on September 11, 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
Complainant in these administrative proceedings is Deutsche Börse AG, with its place of incorporation and principal place of business in Frankfurt am Main, Germany.
Complainant is a market place organizer for financial services, particularly trading in shares and other securities in Germany. Moreover, Complainant is a transaction service provider, which affords companies and investors access to global capital markets by means of advanced technology. Its product and service portfolio covers the entire process chain from order input to custody of shares and derivatives.
Together with SIX Swiss Exchange AG, Complainant jointly operates Eurex, the world's leading futures and options exchange. Eurex is a public company and is owned in equal parts by Complainant and SIX Swiss Exchange AG. The Eurex exchange is a market for the trading and clearing of Euro-denominated derivatives. The trading participants are connected to the Eurex system via a communication network. Currently some 700 locations worldwide are connected to Eurex. Aside from operating a fully electronic trading platform, Eurex provides an automated and integrated joint clearing system for products and participants, thereby achieving centralized, cross-border risk management.
Complainant is the owner of a number of registrations for the trademark EUREX in Germany, in the European Union (Community Trademark Registration) and other countries.
The disputed domain name was registered on February 10, 2009. 5. Parties' Contentions A. Complainant The domain name is confusingly similar to Complainant's trademark/service mark (paragraph 4(a)(i) of the Policy).
The contested domain name is confusingly similar to Complainant's well-known EUREX trademarks. The second-level part of the domain name is, with the exception that a hyphen was added, identical to the trademark EUREX. The overall impression given by the subject domain name suggests that it belongs to Complainant, and consumer confusion will inevitably result.
The addition of the top-level domain extension “.com” does not dispel the likelihood of confusion, since domain name registrants must make use of a top-level domain extension. Top-level domain extensions are, therefore, to be ignored when assessing the identity or similarity between domain names and trademarks. No rights or legitimate interests of the Respondent in respect of the subject domain name (paragraph 4(a)(ii) of the Policy).
Respondent has no rights or legitimate interests in respect to the domain name .
There is no use, nor do any demonstrable preparations exist concerning any further use at the domain name with respect to a bona fide offering of goods or services, according to paragraph 4(c)(i) of the Policy. Under the contested domain name Respondent displays a website allegedly offering currency exchange and fast cash transfer services. It is, however, more than obvious that Respondent is actually not providing any services at all. In particular, Respondent cannot even be reached at the given physical address. The alleged address of Eure-X Int Finance Group - Neue Börsenstr. 1, 60487 Frankfurt - as displayed under the website is not the address of Respondent, but actually Complainant's address. Under Complainant's address, however, no Eure-X Int Finance Group is residing.
Furthermore, the website refers to alleged branch offices, all of which are allegedly located on prominent streets in major European cities. Neither of these alleged branch offices could be verified by Complainant, as only the street names and no numbers are listed. The phone number quoted for example in relation to the branch office in Berlin has the area code of Munich (89).
The telephone number of the alleged “Head Office” in Frankfurt has the area code of Berlin (30). According to the telephone directory service available under “”, the number is actually allocated to “Humboldt University” in Berlin.
The missing street numbers of Respondent's “offices” and the obviously fake telephone numbers can only lead to the conclusion that the alleged offices do not exist. As there is no further functionality on the website, it has to be concluded that the website very likely seems to serve other, maybe even illegal purposes.
Also since May 2009 the website obviously contains and spreads one or more viruses or malware programs (so that some Internet browsers even block the access to the website). Accordingly, the safe browsing diagnostic page for as provided by Google lists two pages of the website that can be reached at the disputed domain name as containing malicious software being downloaded and installed without user consent. According to the anti-virus and anti-spy software, F-Secure, the website hosted under the disputed domain name includes the Virus “Trojan-Clicker.JS.Agent”. According to the information on the webpage “”, in relation to the virus group “Trojan-Clicker”, viruses try to connect to certain websites on the Internet, for the purpose of increasing clicks to paid advertisements.
Complainant further alleges that Respondent is not commonly known by the domain name (paragraph 4(c)(ii) of the Policy). No reference can be found to Respondent's name Eure-X GmbH SW besides two listings as the owner of the disputed domain name in Whois databases. It is highly doubtful that Respondent even exists as a legal entity. A Eure-X GmbH SW as well as other company names containing “Eure-x” or “Eure-x GmbH” cannot be found on the Finnish Business-Information System (BIS-Search). Also, the abbreviation used by Respondent for the legal form of its company, “GmbH”, means “Gesellschaft mit beschränkter Haftung” (limited liability company according to German law), but is not valid for Finland. Respondent is, according to the German company register, not incorporated in Germany either. As Respondent, according to all available information, does not exist as a legal entity, it cannot be assumed that Respondent is commonly known under the domain name in dispute.
Finally, it is evident that Respondent is not making noncommercial fair use of the contested domain name. The intent is obviously to misleadingly divert customers or tarnish the trademark or service mark at issue (paragraph 4(c)(iii) of the Policy). As Respondent is, as already described above, using Complainant's address on the webpage as its alleged business address, there is a clear intent to mislead customers. Bad Faith (paragraph 4(a)(iii) of the Policy).
By using the contested domain name in the above-described way, Respondent deliberately intends to attract Internet users to its website, thus creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website (paragraph 4(b)(iv) of the Policy).
Moreover, by the use of Complainant's address Neue Börsenstr. 1, 60487 Frankfurt, it becomes evident that Respondent is actively trying to create the impression that its services are provided by Complainant and is, therefore, acting in bad faith.
While already the use of Complainant's trademark in the slight variation with only a hyphen added between the last two letters creates the impression that the services provided under the domain name at issue are provided by the well-known Complainant, Respondent even seeks to intensify this impression by using Complainants street address as the address of an allegedly existing Eure-X Int Finance Group, which is allegedly operating the exchange and cash transfer services at issue. However, no such group exists under Complainant's address.
It is thus evident that Respondent is using the contested domain name to attract Internet users for commercial gain, to a commercial website that makes improper use of Complainant's mark, and exploits its good reputation. This is an act constituting bad faith within the meaning of para.4(b)(iv) of the Policy.
Further evidence that Respondent is acting in bad faith are the exploits and viruses hosted under the web pages of the disputed domain name (paragraph 4(b)(iii) of the Policy). If Respondent was actually interested in providing highly sensitive cash transfer and money exchange services, it would be interested in removing any virus or other security risk from its website. The use of the contested domain name to distribute viruses or other malware has the obvious intention of disrupting the business of Complainant who is also providing many of its services online. This is especially dangerous for Complainant as the financial services provided by it are highly security sensitive, and the implication that Complainant's security systems cannot prevent a virus infection is highly damaging for Complainant. Reference is made to 24/7Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043.
Finally, on May 8, 2009, Complainant sent a warning letter to Respondent, but Respondent did not react to this letter. Failure to respond to a warning letter is another indication of bad faith as stated in, Six Continents Hotels, Inc. vs. Damir Kruzicevic,WIPO Case No. 2002-0674.
Consequently, all three prerequisites, as set out in paragraph 4(a) of the Policy, are fulfilled. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The disputed domain name contains Complainant's distinctive and widely used trademark EUREX in its entirety. Neither the insertion of a hyphen between the “E” and the “X” nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to Complainant's trademark.
The Panel finds that the disputed domain name is confusingly similar to Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its trademark.
Complainant alleges and has made a prima facie showing that Respondent has no rights or legitimate interests in the domain name. Respondent has not rebutted this and, based on the record of this case it is unlikely that any such rights or legitimate interests exist.
In this context the Panel notes that “Eurex” appears to be an invented word that has no specific meaning. In addition Respondent's domain name was registered several years after Complainant registered and started using its trademark, and Respondent is using the disputed domain name for a website which not only appears to offer some of the same services as those of Complainant but also gives the Internet user the impression that the website is the official website or a website closely connected to Complainant.
The Panel is satisfied with the information and evidence provided by Complainant that the fact that Respondent has indicated the company name Eure-X GmbH SW as the name of the contested domain name, are indeed incorrect, as no such company seems to exist.
It can therefore be ruled out that Respondent could plausibly claim to use the disputed domain name for any purpose unrelated to Complainant or its products, nor could he possibly claim that the domain name is intended to be used for any legitimate interests and such a claim would in any event also be contrary to the way Respondent has been using and is still using the disputed domain name. The Panel further refers to its below findings in relation to the actual use made of the domain name.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the coined nature of the word “Eurex”, the fact that the trademark is registered in the country of residence of Respondent, Finland, and the extensive promotion of the trademark, it is inconceivable to the Panel that Respondent registered the disputed domain name without prior knowledge of Complainant and Complainant's mark. This is underlined by the way Respondent actually uses the contested domain name, namely for a website which not only appears to offer some of the same services as those of the Complainant but also gives the Internet user the impression that the website is the official website or a website closely connected to Complainant.
The Panel therefore finds that Respondent by its registration and its use of the disputed domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain.
Furthermore, the Panel notes that Respondent not only appears to have given incorrect or even false contact details in breach of the registration agreement, which constitutes evidence of registration in bad faith, see, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and several subsequent decisions, but also gives false and deceptive “contact information” on the website under the contested domain name. As pointed out by Complainant it seems evident that this information is used in order to give the Internet user the impression that the Registrant is identical to or at least closely associated with Complainant.
The Panel also agrees with Complainant that the distribution of malware must be considered to be disruptive to the business of a competitor, and therefore, as an indication of bad faith as stated on 24/7 Real Media Inc., supra.
The Panel notes that the failure to respond to a cease and desist letter has been seen as an indication of bad faith in other UDRP decisions, but due to the above findings the Panel need not consider this question further.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Dated: September 22, 2009
Full & Egal Universal Law Academy