1.1 The Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Melbourne IT Digital Brand Services, Sweden.
1.2 The Respondent is ICS INC. / Contact Privacy Inc. Customer 0131236749, of Grand Cayman, Cayman Islands, Oversea Territory of United Kingdom of Great Britain and Northern Ireland; Toronto, Canada, respectively (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On October 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 15, 2012.
3.2 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”).
3.3 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 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on November 19, 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
4.1 The Complainant in these administrative proceedings is IG Group Limited, a private limited liability company incorporated in the United Kingdom with its registered address at Cannon Bridge House 25 Downgate Hill, EC4R 2YA London United Kingdom. The Complainant is said to have been established in 1974 and is said to be a pioneer in the financial derivatives trading online business. The Complainant is said to have thousands of clients worldwide with a turnover of GBP 366.8 million in the year up to May 2012. The Complainant is also said to be represented by its own companies and subsidiaries all over the world including countries such as Germany, Singapore, the Russia Federation, France, United Kingdom, Italy, Japan, Sweden and the United States of America. The Complainant is the owner and proprietor of the IG MARKETS trademark under which the Complainant offers its products and upon which the Complainant is said to have expended a significant amount of money in promoting and developing.
4.2 The Respondent in these administrative proceedings is ICS INC. / Contact Privacy Inc. Customer 0131236749 with a place of business at Grand Cayman, Cayman Islands, Oversea Territory of United Kingdom as amended, and Toronto, Canada, respectively. According to the printed extract from the WhoIs database, the disputed Domain Name was registered on May 14, 2012. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark IG MARKETS which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world; in that the disputed Domain Name comprises of the word “igmarkeet” including an additional “e” without an “s”. The Complainant further contends that there is a high risk that Internet visitors looking for the Complainant’s website will end up on the Respondent’s website when mistyping IG MARKETS. The Complainant submits that the mere addition of the generic top-level domain “.com ” does not distinguish the disputed Domain Name from the Complainant’s trademark and in support of that contention, the Complainant relies on the following cases namely, Health Devices Corp. v. Aspen STC, NAF Claim No. FA 158254 and EPSON Europe BV v. M31 Internet Palma, S.L.,WIPO Case No. D2005-0604.
5.2 The Complainant contends further that the Respondent’s usage of the trademark as a dominant part of the disputed Domain Name is tantamount to exploiting the goodwill and image of the Complainant’s trademark which may result further in the dilution and other damage to the Complainant’s trademark.
5.3 The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name as the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed Domain Name. The Complainant further submits that no license or authorization of any kind has been given to the Respondent to use the trademark IG MARKETS by the Complainant. The Complainant relies on the case of Dr Ing. h.c.F. Porsche AG v. Ron Anderson,WIPO Case No. D2004 -0312 to assert that since the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, the Respondent cannot be said to have any rights or legitimate interests in the disputed Domain Name. The Complainant argues further, that the mere registration of the disputed Domain Name and using the disputed Domain Name in connection with sponsored links do not give the Respondent any rights or legitimate interests in respect of the disputed Domain Name. In this regard the Complainant places reliance on numerous previous UDRP decisions including Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
5.4 With regards to the question of bad faith registration and use, the Complainant’s primary contention is that the Complainant’s widespread reputation and substantial value in the online trading industry is what made the Respondent register the disputed Domain Name in the first place. The Complainant further contends that the Respondent failed to reply to its initial cease and desist letter and follow up reminder; and as held in previous UDRP decisions such as News Group Newspapers Limited and News Network Limited v. Momm Amed IaWIPO Case No. D2000-1598 etc, the failure of a registrant to respond to a cease and desist letter or similar attempt at contact is a relevant factor to consider in finding bad faith registration and use. Thirdly, the Complainant asserts that the disputed Domain Name is currently connected to a website containing sponsored links and the Respondent is therefore using the disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the websites. The Complainant further contends in this regard that it is immaterial that the Respondent is not actually deriving any financial benefit from the sponsored web pages and asserts that the Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct. The Complainant relies further on previous decisions such as: (i) The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net Vaca Systems LLC., WIPO Case No. D2009-0057 and (ii) Staples, Inc. and Staples the Office Superstore LLC. v. Cpn Now, NAF Claim No. FA 1257595. B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such adverse inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy to succeed in these administrative proceedings, the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds that the disputed Domain Name is identical or confusingly similar to the Complainant’s registered trademark IG MARKETS and registered domain names all over the world, such as registered in the year 2000. Clearly, the disputed Domain Name comprises wholly of the Complainant’s trademark IG MARKETS except for the removal of the letter “s” and the addition of the letter “e”. The Panel agrees with the Complainant’s contention that the mere addition of the letter “e”, the removal of the letter “s”, and the addition of the generic top-level domain “.com”, do absolutely nothing to preclude a finding of identical or confusing similarity. In this regard the Panel relies on the decision in EPSON Europe BV V. M31 Internet Palma S.L., supra. cited by the Complainant, where it was held that for the purposes of an identical or a confusingly similar finding no account should be taken of the generic top-level domain because it has no legal significance.
6.4 The Panel is accordingly satisfied that the Complainant has established that the disputed Domain Name is identical or confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
6.5 On the question of rights or legitimate interests in respect of the disputed Domain Name, the Panel also finds that the Respondent has failed to provide any tangible evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. Clearly, the Respondent has not provided any evidence of a license or authorization granted by the Complainant; and as the Complainant asserts, the Respondent is not an authorized dealer of the Complainant’s goods nor has there ever been any business relationship between the Respondent and the Complainant. As submitted by the Complainant, the Respondent’s usage of the disputed Domain Name in connection with sponsored websites does not in any way amount to establishing rights or legitimate interests in the disputed Domain Name. The Panel finds that this is a well- founded submission which is supported by the findings in previous UDRP decisions cited by the Complainant including the more recent decision in the case of Donald J. Trump v. Mediaking LLC d/b/aMediaking Corporation and Aaftek Domain Corp, supra where the panel so held in directing the transfer of the domain name to the complainant.
6.6 The Panel is therefore satisfied that the Respondent registered the disputed Domain Name with the sole aim of deceiving Internet visitors as to the origin, sponsorship or approval of the Respondent’s commercial activities by the Complainant. The Panel finds that such unauthorized usage cannot be classified as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed Domain Name. The Panel relies generally on the concept of rights and legitimate interests in a domain name as propounded by the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
6.7 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 With reference to the question of bad faith registration and use, the Panel finds that the Respondent undoubtedly registered the disputed Domain Name in bad faith and continued to engage in bad faith use. In arriving at this conclusion, the Panel has taken into account a number of relevant factors. In the first instance it is abundantly clear that the Respondent decided to register the disputed Domain Name as a result of the Complainant’s widespread reputation and substantial value in the online trading industry being a company established since 1974, in the United Kingdom, with exclusive and well established rights in the IG MARKETS trademark. The Panel finds without any hesitation that the Respondent must have had constructive, if not actual notice of the Complainant’s exclusive and well-established rights. See in this respect the case of Google, Inc. v. Abercrombie1, NAF Claim No. FA 0111000101579 where the panel decided that for a well-known trademark such as GOOGLE, constructive notice is sufficient to fix the respondent with notice or knowledge of the existing trademark. Secondly, the Respondent failed to respond to the cease and desist letters, the first sent by email on July 23, 2012 and a reminder sent on July 31, 2012, as dispatched by the Complainant to the Respondent. The Panel in addition finds, the Respondent’s failure to respond to these letters as a most relevant factor to consider in relation to the bad faith registration and use element under the UDRP as also stated in the case of News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623. Thirdly, as evidenced by a printed webpage linked to the disputed Domain Name, the disputed Domain Name is currently connected to a website containing sponsored links. This piece of documentary evidence clearly demonstrates that the Respondent is using the disputed Domain Name to attract for commercial gain Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites. This is undoubtedly clear evidence of bad faith registration and use. See in this regard the case of The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net Jennifer Lopez Vaca Systems LLC., supra. Fourthly, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to also respond to the evidence and submissions provided by the Complainant in these proceedings. 7. Decision
7.1 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 forthwith.
Ike Ehiribe
Sole Panelist
Dated: December 5, 2012
Full & Egal Universal Law Academy