The Complainant is Stoxx AG of Zürich, Switzerland, represented by Meisser & Partners, Switzerland.
The Respondent is 247 Holdings Group of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2012. On August 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2012, the Registrar 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 August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2012.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on September 13, 2012. 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 is a joint venture of the Deutsche Börse AG, Dow Jones and SIX Swiss Exchange. It was founded 1997 and is a corporation incorporated under the laws of Switzerland according to the commercial register of the Kanton Zürich as per Annex 1 to the Complaint. The Complainant has developed the European Stock Index family named STOXX, which is similar to the Dow Jones-index for US-American stock companies, the NIKKEI-index for Japanese stock companies and the DAX for German stock companies. The first STOXX indices were launched in the market in 1998. The Complainant licenses its indices to the world’s largest issuers of financial products, capital owners and asset managers as well as to more than 400 companies around the world. The indices are used not only as a basis for financial products such as exchange-traded funds (ETFs), futures and options, structured products and risk and performance measurements. The Complainant is also the marketing agent for the indices of its shareholders Deutsche Börse AG and SIX Group AG, among them the DAX and SMI indices.
The Complainant learnt about the registration of the disputed domain name by the Respondent through a watch notice dated August 6, 2012. The Respondent is using the disputed domain name as a landing page operated by the Registrar offering numerous links targeted at the marketing of financial services products. 5. Parties’ Contentions A. Complainant
The Complainant argues that he is owner of numerous trademarks with the key element STOXX, among them STOXX, STOXX 50, EURO STOXX and EURO STOXX 50 which are all quoted in the financial press worldwide and are internationally used by licensees for financial instruments such as bonds and options. In particular, the Complainant has provided, by Annexes 14 to 18, information as to following trademarks:
- International trademark no. 696866 STOXX for goods and services in classes 9, 16, 35, 36, 38, 41 and 42, registered on June 9, 1998 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide;
- CTM no. 1231646 STOXX registered on September 12, 2000 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 with protection in the European Union;
- International trademark no. 699180 EURO STOXX, registered on April 2, 1998 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide;
- International trademark registration no. 698166 STOXX 50, registered on June 9, 1998 for goods and services in classes 9, 16. 35, 36, 38, 41 and 42 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide, and
- International registration no. 702730 Euro STOXX 50 registered on July 29, 1998 for goods and services in classes 9, 16. 35, 36, 38, 41 and 42 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide,
- UK trademark no. 2302608 STOXX registered on June 12, 2002 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42.
Thus, the Complainant claims, that the trademark STOXX was also registered in the alleged home country of the Respondent as a national mark, and the index STOXX was already known in the financial world before the creation of the Respondent’s domain name in 2011. The Complainant also points to print outs of the Brockhaus in Annex 7, of the New York Times in Annex 8, the Economic Times in Annex 9 and Bloomberg search in Annex 10 as a reference for use of the trademark STOXX of the Complainant, and, as far as Annex 7 is concerned, in particular with the notice that STOXX is not a generic term but a registered trademark.
The Complainant further contends that the disputed domain name is identical or confusingly similar to trademarks or service marks, in which the Complainant has right. It points to the fact that “options” is, in financial services, merely a descriptive term, identifying a “derivative financial instrument that specifies on contracts between two parties for a future transaction on an asset at a reference price”. Therefore, it claims that the addition of “options” to STOXX does not dispel confusing similarity and refers to the earlier decision, STOXX AG v. Rex Huang,WIPO Case No. D2008-1806, of February 5, 2009.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the domain name. In doing so, the Complainant submits that it has registered trademarks since 1998 and that the Complainant’s trademark STOXX was also registered in the alleged home country of the Respondent in the UK as a national mark at the time that the disputed domain name was created in 2011. It also argues that the stock index STOXX as such was already known in the financial world before the creation of the disputed domain name. Thus, the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name.
The Complainant presumes that the Respondent has not been commonly known by the disputed domain name, as it has no relation to the Complainant and was not authorized or licensed by the Complainant. It also states that the use of the disputed domain name according to Annex 12 is not a legitimate non-commercial or fair use of the disputed domain name.
The Complainant argues that the Respondent is not using the disputed domain name for a bona fide offering of goods or services, but rather to intentionally attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s mark. For this, it points to an excerpt taken from the website, into which the disputed domain name resolves, according to which the Respondent offers links to various websites for services in the field of finance and stock exchange not affiliated with the Complainant. It considers this to be a sign for the Respondent engaging in domain name parking by enabling the holder to speculate for the possible sale of the domain name while at the same time collecting financial remuneration.
The Complainant claims that the disputed domain name was registered and is being used in bad faith. It states that the STOXX trademarks of the Complainant are notoriously famous worldwide for people active in the field of finance and stock exchange at least. The Respondent must have been aware of these trademarks at the time of the registration of the disputed domain name. The Complainant points to the fact that the Respondent never replied to a warning letter sent to him on October 26, 2012 according to Annex 19.
The Complainant finds that the registration of the disputed domain name prevents the Complainant from using his trademark STOXX for the goods/services it is registered for and that the sole purpose of this conduct is to divert Internet users to other websites rather than the website of the Complainant. It states that the Respondent exploits the Internet users’ association of the disputed domain name with the business and trademark of the Complainant for its own commercial gain, namely to attract Internet users to link them to other pages and get paid for the relevant clicks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that:
(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;
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a Respondent to “[r]espond specifically to the statements to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable. A. Identical or Confusingly Similar
The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark STOXX, which all predate the registration of the disputed domain name. The disputed domain name consists of the second level domain “stoxxoptions” and the top level domain “.com”, which is generally disregarded when addressing confusing similarity.
The disputed domain name contains the Complainant’s trademark in its entirety and differs from the trademark only by the addition of the generic word “options”.
The additional word “options” does not dispel confusion. On the contrary, the Panel finds that the word enhances the likelihood of confusion. “Options” is a descriptive term that may easily be associated with the business or services of the Complainant, as “options” are financial products generally traded which may be subject to the indices that are branded with the Complainant’s above mentioned trademarks. Thus, the disputed domain name could easily be a domain name of the Complainant.
As already found by numerous UDRP Panels, the mere addition of generic or descriptive words is insufficient in itself to avoid finding of confusing similarity (see Crédit Lyonnais v. Jehova Technologies PTE Ltd.,WIPO Case No. D2000-1425, and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314).
For these reasons, the Panel concludes that the addition of the word “options” does not change the overall impression of the disputed domain name as being dominated by the distinctive trademark STOXX and does not serve to distinguish the disputed domain name from the Complainant’s marks. As far as the distinctiveness of the trademark STOXX goes, the Panel takes particular notice of Annex 7, according to which the Brockhaus recognizes that STOXX s an individual trademark rather than a descriptive term of the financial industry.
Hence, the disputed domain name is confusingly similar to the Complainant’s STOXX trademarks. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant for financial services. Therefore, in the Panel’s view, Internet users may assume that the disputed domain name refers to a website of or is authorized by the Complainant.
In view of the above, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.
Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.
Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:
“circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the disputed domain name;
the registrant 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 the registrant has engaged in a pattern of such conduct;
the registrant has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor;
by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.”
The Complainant has brought evidence that it has trademarks that have been registered long before the Respondent registered the disputed domain name, and it has brought evidence for the fact that the trademarks of the Complainant are generally known at least in the market community of financial services, in which the Respondent is also active with its landing page. Even though it may not generally be known that the stock exchange indices, for which the trademark STOXX is used and in the context with which the trademark is used, such as “Dow Jones STOXX” or “Dow Jones Euro STOXX” are registered trademarks, the Complainant has, in particular by providing Brockhaus excerpt according to Annex 7, shown that it can be assumed that at least relevant parts of the community take STOXX to be a trademark, and the Respondent cannot conceivably have assumed that it would be entitled to register a domain name incorporating the name or title of a stock exchange index for a landing page that does not refer to such indices precisely but only to financial services in general. At least since having received (or presumed to have received) the warning letter of the Complainant dated October 26, 2011 (Annex 19) the Respondent was aware of the Complainant’s trademark rights and has, at least since then, used the disputed domain name in full knowledge of the Complainant’s earlier trademark rights.
Therefore, the Complainant has, to the Panel’s satisfaction, demonstrated that the Respondent has registered and is using the disputed domain name in order to attract, for financial gain, Internet users to the websites at the disputed domain name according to paragraph 4(b)(iv) of the Policy as the Respondent uses, according to website excerpt in Annex 12, the disputed domain name in order to lead Internet users to a landing page containing numerous links to various products and service offers in the financial services industry, and it can be assumed that the Respondent in fact gains revenues from directing website traffics by these links to advertisers and holds, with S, Inc. v. Name Administration Inc.,WIPO Case No. D2002-1167, that such conduct is to be qualified as using the disputed domain name in order to attract, for financial gain, Internet users to the domain owner’s website.
In similar circumstances, UDRP panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate “pay-per-click” sites, may be considered to be evidence of bad faith, regardless of whether it becomes apparent to the Internet user when having arrived at the “pay-per-click” site, that the website is not necessarily connected with the trademark owner (see Credit Industriel et Commercial S.A. v. Richar J.,WIPO Case No. D2005-0569; Société Air France v. Bing G Glu,WIPO Case No. D2006-0834; Société Air France v. WWW Enterprise Inc. (173206),WIPO Case No. D2005-1160; and Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364). At that point, upon arrival at the website, the disputed domain name has already served its purpose to attract the user and generate commercial gain.
For all of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
Therefore, it does not have to be decided whether the Respondent has also registered the domain name in order to prevent the owner of the trademark to use its trademark as a disputed domain name or primarily for the purpose of disrupting the business of a competitor. 7. Decision
For 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 Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Dated: September 24, 2012
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