WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MF Global Ltd. v. Christine Serwinskiann Case No. D2009-1532 1. The Parties
The Complainant is MF Global Ltd. of New York, United States of America, represented by Katten Muchin Zavis Rosenman of United States of America (the “U.S.”).
The Respondent is Christine Serwinskiann either of New York, United States of America or the People's Republic of China. (The Panel notes that it is the Complainant's case that the Respondent is not in fact Christine Serwinskiann. Ms. Christine Ann Serwinsiki is the Chief Financial Officer - North America of the Complainant, who has not registered the disputed domain name).
The parties above are collectively referred to the “Parties”. 2. The Domain Name and Registrar
The disputed domain name the (“Domain Name”) is registered with 35 Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2009. On November 16, 2009, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the Domain Name. On November 17, 2009, 35 Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 20, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2009. Pursuant to the Rules, paragraph 5(a), the due date for Response was December 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2009.
The Center appointed Douglas Clark as the sole panelist in this matter on December 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.
The Complaint was submitted in English supplemented with a request by the Complainant that English be the language of the proceedings, while the language of the Registration Agreement for the Domain Name is Chinese. On November 18, 2009, the Center notified both the Complainant and Respondent in English and Chinese that the Parties would be given the opportunity to submit comments on Complaint's language request. The Respondent did not submit any objection to the language request within the specified due date of November 25, 2009.
On November 26, 2009, the Center notified the Complainant and the Respondent in English and Chinese that:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.”
The Center also notified the Complainant and the Respondent that the discretion to decide the language of the proceedings lay with the Panel on appointment. The Panel gives its full decision on the appropriate language of these proceedings in the Discussion and Findings section below. 4. Factual Background
The Complainant is a limited company incorporated under the laws of Bermuda. The business scope of the Complainant includes financial and investment services. The Complainant owns the registrations of a substantial number of trademarks and service marks for the trademark MF GLOBAL in many countries and areas, including U.S., Canada, European Union, Japan, New Zealand, Singapore, and Taiwan, (collectively referred to the “MF GLOBAL marks”). Through its subsidiary companies, the Complainant registered a number of domain names incorporating the MF GLOBAL marks.
The Respondent registered the Domain Name on November 16, 2008 and commenced to use this Domain Name on the same date. 5. Parties' Contentions A. Complainant
The Complainant's main contentions are summarized as follows: a) Identical or Confusingly Similar
The Respondent registered the Domain Name which is substantially identical and confusingly similar to the MF GLOBAL marks and the Complainant's domain names of and . The Domain Name differs from the Complainant's own domain name only by inserting a hyphen.
Moreover, the Domain Name is indicative of an express reference to the Complainant, which particularly creates confusion and shows the Respondent's intention of confusing the public into believing the Domain Name in dispute is associated with or endorsed by the Complainant. The Complainant contends this is to connect the Respondent with exact financial services that the Complainant provides.
In addition, the Complainant submits that the Respondent identifies itself as by using the Complainant's National Futures Association (“NFA”) identification No. 0266826, the NFA's trademark logo, and the link to NFA's web site, which evidences the Respondent's attempt to connect itself with the Complainant to confuse consumers.
The Complainant submits that the suffix “.com” has no impact on the consideration of confusing similarity. This contention relied on the precedent WIPO UDRP decision Deutsche Telekom AG v. D,WIPO Case No. D2002-0164. b) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent's use of the Domain Name is only to intercept and distract Internet users intending to use the Complainant's services and to misdirect such users to advertising sites for commercial gain.
Additionally, the Complainant asserts there is no agreement, legal or otherwise, between the Respondent and the Complainant authorizing the Respondent to use the Complainant's the MF GLOBAL marks, which is the central element of the Domain Name.
The Respondent has no trademark registrations for any mark composed of, partially or entirely, the MF GLOBAL marks, nor has the Respondent applied for any such trademark registrations. c) Registered and Used in Bad Faith
The Complainant contends the Respondent has registered and used the Domain Name in bad faith on the following grounds:
The Respondent was put on constructive notice of the Complainant's rights to the MF GLOBAL marks based on its U.S. federal registration and actual notice of such rights by the Complainant prior to the Complainant's bringing the administrative proceedings before WIPO from the correspondence sent by the Complainant to the Respondent.
The Complainant further contends that the Respondent fraudulently uses the Complainant's address, contact numbers, and name of one of its staff members, Christine Ann Serwinski, Chief Financial Officer-North America for the registration information of the Domain Name as the Respondent's contact information. This establishes the Respondent's bad faith pursuant to the decided case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The Domain Name Registration Agreement being in Chinese, pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement (subject to the Panel's discretion to determine otherwise), i.e., the default language of the proceedings is Chinese. However, after being notified the registration agreement was in Chinese, the Complainant submitted arguments to why the proceedings should be conducted in English.
The Complainant's arguments on the language of proceedings are summarized below:
i) Both the Complainant and Respondent are located in the U.S. and are able to communicate in English because the Respondent listed its contact information as “MF Global Inc, New York, NY 10020” in registering the Domain Name and a bulk of the contact information shows an address in the U.S., although the country China is also indicated in the contact information of the Respondent;
ii) The Respondent shows its command of English and capability of conducting business in English by listing the Complainant's NFA No., NFA's trademark logo, and the link to NFA's web site on the web site under the Domain Name;
iii) The Respondent solicits business in the U.S. and United Kingdom of Great Britain and Northern Ireland through its web site and operates the web site in question; and
iv) The Complainant is not familiar with Chinese.
The Respondent did not file any objection to the Complainant's language request.
The Panel notes that a practical policy or exception to the general language requirement set in paragraph 11(a) of the Rules and which has been held by the majority of panels is that “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different [from] the language of the registration agreement.” See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.3.
In this case, the Panel has no hesitation in deciding the Complainant can proceed in English. On the company profile of the Respondent, on the web site under the Domain Name, the Respondent identifies itself as an American company established in 1971 and uses English in addition to Chinese to solicit business. The Panel concludes that the Respondent has sufficient capability to communicate and conduct business in English and understand the Complaint. 6.2 Substantive Elements of the Policy
There being no Response, paragraphs 5(e) of the Rules directs the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, in order to succeed in the proceedings and obtain transfer of the Domain Name, the Complainant must establish that each of the three following elements is satisfied:
i) The Domain Name is identical or confusingly similar to the Complainant's trademark or service mark;
ii) The 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.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
i) Circumstances indicating that the Respondent has registered or 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 trade mark or service mark or to a competitor of the 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 trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent has 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 the Respondent's website 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 the Respondent's website or location or of a product. A. Identical or Confusingly Similar
The Complainant provided a list of the registrations of its trademarks, submitted a registration certificate of the service mark in the U.S.A., and submitted the WhoIs search results to prove its registrations of domain names incorporating the MF GLOBAL marks in the U.S. and numerous countries and areas worldwide through its subsidiary companies. The Panel finds the Complainant has legitimate rights in the MF GLOBAL marks and its domain names and .
By comparing the Domain Name and the above marks, the Panel notes the Domain Name incorporates the Complainant's trademarks in full and deviates from the marks only by inserting a hyphen between “mf” and “globalforex”.
Accordingly, the Panel concludes that the Respondent's Domain Name is confusingly similar to the Complainant's MF GLOBAL marks, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. In regard to this issue, given that the Respondent has not responded, the Panel accepts the Complainant's arguments that:
i) The Respondent has not been duly authorized by the Complainant to incorporate the MF GLOBAL marks into the Domain Name; and
ii) The Respondent is not associated with the Complainant in any way.
Therefore, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the Domain Name and accordingly has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel also finds that the Respondent has registered and is using the Domain Name in bad faith for the following reasons:
i) The Domain Name was registered after the Complainant's adoption and first commercial use of the MF GLOBAL marks;
ii) The Respondent uses the Complainant's contact information on the web site under the Domain Name as the Respondent's contact information;
iii) The Respondent's web site under the Domain Name provides the contact information of NFA, of which the Complainant is a member entity; and
iv) The Respondent purports to be the Complainant on the web site.
The Panel therefore has no hesitation in deciding the Respondent registered and uses the 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 Domain Name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: December 24, 2009
Full & Egal Universal Law Academy