The Complainant is GFI Group, Inc. of New York, New York, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is GFI Finance Ltd of Hong Kong, Special Administrative Region of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2010. On September 27, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On September 27, 2010, Tucows 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 sent an email communication to the Complainant on September 29, 2010 requesting the Complainant to confirm that a copy of the Complaint and its Annexes had been sent to the Respondent by email. The Complainant confirmed this accordingly on September 29, 2010.
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 October 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 27, 2010. 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 was founded in 1987 and provides wholesale market brokerage services in a multitude of global over-the-counter and exchange listed cash and derivatives markets for fixed income, equities, financials and commodities. The Complainant has over 2,400 institutional clients including banks and insurance companies. The Complainant employs more than 1,700 people and is headquartered in New York, United States of America with additional offices in a variety of locations worldwide including London, Paris, Hong Kong, Seoul, Tokyo, Singapore, Sydney and Cape Town. The Complainant is the owner of a variety of trademark registrations including U.S. trademarks No. 2102950 for the word mark GFI GROUP registered on October 7, 1997 and No. 3081665 for the word GFI and design registered on April 18, 2006 and European Community trademark No. 4042982 for GFI and design registered on October 21, 2005, all for use in connection with various financial services.
The Respondent is an entity apparently based in Hong Kong, Special Administrative Region of the People’s Republic of China. The Respondent registered the disputed domain name on April 8, 2008. Although the website associated with the disputed domain name now bears the legend “under construction” and is otherwise blank, it originally hosted what appears to be a corporate website under the name GFI Finance which stated, on a page entitled “About GFI Finance”, that the Respondent was “part of the GFI Group which have business presence across Asia, Africa, America, Europe and Middle East [sic]”. The Respondent’s website also provided a downloadable form entitled “GFI Finance Client Application Form” requesting personal data from potential customers including passport scans, bank statements and investment portfolio valuations.
On May 20, 2010 the Complainant’s legal counsel wrote to the Respondent by email asserting that the statement on the Respondent’s website that the Respondent was part of the GFI Group was untrue, alleging trademark infringement and seeking written undertakings that the Respondent cease using the GFI mark and transfer the disputed domain name to the Complainant. On or about June 1, 2010 the Respondent replied via an unsigned and undated letter agreeing to cease operation of the disputed domain name but refusing to transfer it to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no right or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The disputed domain name incorporates entirely the Complainant’s distinctive trademark to which a descriptive word “finance” has been added. This renders the disputed domain name confusingly similar to the Complainant’s trademark. The added word is descriptive of services of the type offered by the Complainant and reinforces this confusion.
The Respondent has used the disputed domain name to ride on the goodwill and renown of the Complainant’s trademark and cannot possibly have a right or legitimate interest thereby, particularly as it has fraudulently claimed that it was part of the Complainant’s corporate group. That claim also demonstrates the fact that the Respondent was aware of the Complainant and intentionally sought to trade on its renown. The Complainant has not consented to the Respondent’s use of the Complainant’s trademark, the Respondent is not commonly known by the disputed domain name and there is no affiliation or connection between the Complainant and the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and has agreed to cease using it such that it cannot use it for a bona fide offering in the future.
The Respondent is using the disputed domain name to perpetrate fraud against individuals who believe that the disputed domain name originates from or is connected with the Complainant and this is compelling evidence of registration and use in bad faith. Furthermore, the Respondent intended to divert customers from the Complainant for commercial gain, by creating confusion with the Complainant’s trademark and this also evidences a bad faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the trademark GFI and variants including GFI GROUP. The disputed domain name incorporates the Complainant’s trademark GFI in its entirety along with the word “finance”. It is clear that “GFI” is the dominant element of the disputed domain name and that the additional word “finance” is merely descriptive. Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). Furthermore, in the present case the Panel agrees with the Complainant that the descriptive word “finance” is more likely to give rise to far greater confusion because it is in effect a description of the services provided by the Complainant under its GFI trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GFI trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent.
The Complainant submits that it has not consented to the Respondent’s use of the Complainant’s trademark, that the Respondent is not commonly known by the disputed domain name and that there is no affiliation or connection between the Complainant and the Respondent. The Complainant has also asserted that the disputed domain name has been used in connection with the Respondent’s false claim that the Respondent is part of the Complainant’s corporate group and the Complainant has provided supporting evidence in the form of a screenshot of the website associated with the disputed domain name dated May 20, 2010 on which the Respondent made this claim.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed any response in this case which might have provided an explanation of its conduct or set out any evidence of rights or legitimate interests. On the contrary, in its undated letter responding to the Complainant’s solicitors’ letter of May 20, 2010, the Respondent appears to accept that it has no such rights or legitimate interests.
In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
On this topic, the Complainant’s principal submission focuses on an allegation that the Respondent has used the disputed domain name for a phishing scheme to perpetrate fraud against individuals who believe that the disputed domain name originates from or is connected with the Complainant. In support of this assertion, the Complainant produces a screenshot of the Respondent’s website showing the Respondent’s claim to be part of the Complainant’s corporate group together with the form which was originally available for download from the Respondent’s website entitled “GFI Finance Client Application Form”.
The Panel considers that the evidence before it does not by itself necessarily provide sufficient support for the Complainant’s primary contention that the disputed domain name was registered and used in connection with a phishing scheme. The Complainant has established that the Respondent was seeking data from individuals via a downloadable form on its website; however, it is not unknown for financial service companies to request such data from potential customers as part of a screening process, e.g. where connected with anti-money-laundering legislation. No evidence has been produced which demonstrates to the Panel’s satisfaction that the Respondent was seeking such information in order to use it for the purposes of fraud.
Nevertheless, the fact that the Respondent registered a domain name prominently featuring the Complainant’s trademark coupled with the Respondent’s claim on the associated website to be affiliated with the Complainant is more than sufficient for the Panel to find that by using the disputed domain name the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent’s website.
In these circumstances the Panel is satisfied that the Respondent has registered and used the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Dated: November 10, 2010
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