The Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Bargin Register, Inc. - Client Services of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Telecom Tech Corp of Panama City, Panama / URLBrokeringcom of Kentucky, United States of America (“US”) / DomainSponsor of Los Angeles, California, US. 2. The Domain Name and Registrar
At the time of the submission of the Complaint, the disputed domain name (the “Domain Name”) was registered with Bargin Register Inc. (“the First Registrar”). Currently, the disputed domain name is registered with Tucows Inc. (“the Second Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the Domain Name. After several reminders, on February 1, 2013, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information indicated in the Complaint. On February 6, 2013, upon noticing that the publicly-available WhoIs indicated registrant information different from the one confirmed by the First Registrar on February 1, 2013, the Center sent an email communication to the First Registrar requesting explanation of the circumstances of the change in the registrant information for the Domain Name. The Center sent two follow up reminders to the First Registrar with respect to its email communication of February 6, 2013. The Center did not receive any response from the First Registrar.
On February 13, 2013, the Center provided the Complainant with the available registrant information, both as confirmed by the First Registrar and as it was available in the publicly-accessible WhoIs, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 14, 2013.
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 February 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2013.
On March 27, 2013, upon noticing that the First Registrar was subject to a Notice of Termination of Registrar Accreditation Agreement, the Center sent an email communication to the Second Registrar, which appeared to be the new registrar of the Domain Name according to the publicly-available WhoIs. On March 28, 2013, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the one provided by the First Registrar.
The Center appointed David Taylor as the sole panelist in this matter on April 16, 2013. 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.
On May 1, 2013, the Panel issued an Administrative Panel Procedural Order to the Complainant to add “URLBrokeringcom” to the Complaint as a Respondent in order to ensure the enforceability of its Decision against the current holder of the Domain Name. On May 2, 2013, the Complainant amended the Complaint accordingly. The Panel gave the Respondent an opportunity to file a submission specifically concerning the Complainant’s amendment. The Respondent did not file a submission. 4. Factual Background
The factual background is taken from the submissions contained in the Amended Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainant is IG Group Limited, a private limited company incorporated in the UK. The Complainant was founded in 1974 and provides financial derivatives trading services in the UK and all over the world, including in Germany, Singapore, Russian Federation, France, Italy, Japan, Sweden and the USA. The Complainant has tens of thousands of clients worldwide. The Complainant also sponsors various kinds of sporting activities and has high brand awareness on a global scale.
The Complainant offers its products and services worldwide under the mark IG MARKETS and has secured numerous trademark registrations for the term “ig markets”, for a broad range of financial services, in numerous jurisdictions.
The Complainant has also registered numerous domain names consisting of “ig markets”, such as registered in the year 2000, and under these domain names it operates websites to offer its products and services.
The Complainant sent a cease and desist letter to the Respondent on November 28, 2012 and follow up emails. The Respondent did not respond to the Complainant’s cease and desist letter nor to the Complainant’s follow up emails.
The Domain Name was registered on October 2, 2012.
The Domain Name resolves to a parking page containing a variety of links categorized under headings relating to financial market and trading services. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant's trademark IG MARKETS.
The Complainant identifies itself as a pioneer of financial derivatives trading online and asserts that it was founded in 1974. The Complainant provided its trademark and domain name portfolios. The Complainant contends that the Domain Name incorporates its registered IG MARKETS trademark and that the removal of the letter “s” and the addition of the generic top-level domain (gTLD) “.net” are not relevant and do not distinguish the Domain Name from the Complainant’s mark. Finally, the Complainant argues that “by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark”.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant asserts that the Respondent does not own any registered trademarks or trade names corresponding to the Domain Name and that there is no indication that would suggest that the Respondent has been using IG MARKETS in any way that would give the Respondent any rights or legitimate interests in the name. The Complainant further argues the Respondent is not a licensee of the Complainant and has not been authorized by the Complainant to use its trademark IG MARKETS. Furthermore, the Complainant holds that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Complainant also argues that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. The Complainant further asserts that the Respondent has used the Domain Name in connection with sponsored links and that operating a website with sponsored links using a trademark in a domain name does not establish rights or legitimate interests. In this regard, the Complainant relies on a previous UDRP decision involving the Complainant, IG Group Limited v. ICS INC. / Contact Privacy Inc. Customer 0131236749,WIPO Case No. D2012-1993.
(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith.
According to the Complainant, the Complainant’s trademarks for IG MARKETS have substantial and widespread reputation in the online trading industry and that the considerable value and goodwill of the mark IG MARKETS is, most likely, what made the Respondent register the Domain Name. The Complainant holds that it is obvious that the Respondent was aware of the Complainant’s rights in the IG MARKETS trademark and the value of said trademark, at the point of the registration.
In addition, the Complainant argues that the Respondent’s bad faith is demonstrated by the fact that the Respondent failed to respond to its cease and desist letter and follow up emails.
The Complainant further contends that the Domain Name is connected to a website containing sponsored links and that, consequently, the Respondent is using the 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 mark as to the source, sponsorship, affiliation or endorsement of the websites. The Complainant further argues that it is irrelevant whether or not the Respondent has influenced what links appear on the website and whether or not the Respondent is actually getting revenue from the pages itself.
The Complainant concludes that it can be assumed that this registration was made with the Complainant and its business in mind.
In view of the foregoing, the Complainant requests that the Domain Name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 10 of the Rules, the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In view of the Respondent’s failure to submit a response, the Panel shall draw such inferences it deems appropriate and shall proceed to make its decision on the basis of the undisputed statements and documents provided by the Complainant to support its claims, in accordance with the aforementioned provisions.
To be successful in obtaining the transfer of the Domain Name, the Complainant must satisfy each of the three elements set out in paragraph 4(a) of the Policy:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel shall proceed to examine whether the Complainant has discharged the burden of proof in respect of each of the aforementioned three elements set out in paragraph 4(a) of the Policy.
Taking each of these elements in turn, the Panel decides as follows: A. Change of Registrars and Identity of the Respondent
The Complaint was originally filed against “Bargin Register, Inc. – Client Services”, which appeared as registrant of the Domain Name in the publicly-available WhoIs database at the time of filing of the Complaint on January 25, 2013. In its verification response dated February 1, 2013, the First Registrar identified the registrant of the Domain Name as “Telecom Tech Corp”, based in Panama City, Panama. Notwithstanding the registrant details disclosed by the First Registrar, on February 6, 2013 the publicly-available WhoIs indicated that “URLBrokeringcom” was the registered owner of the Domain Name.
The First Registrar thus not only failed to respond promptly to the Center’s verification request (and ignored subsequent communications) but also allowed the transfer of the Domain Name while on notice of the Complaint. Such conduct raises several issues concerning cyberflight, the language of the proceedings and the binding effect of the registration agreement on the registrant.
The Panel notes that this same First Registrar has repeatedly failed to respond to the Center’s requests for verification in a timely manner in a number of recent UDRP cases, leading previous UDRP panels to invite the Center to bring the First Registrar’s conduct to the attention of the Internet Corporation for Assigned Names and Numbers (“ICANN”). See, for instance, Valero Energy Corporation, Valero Marketing and Supply Company v. Bargin Register, Inc. - Client Services, URLBrokeringcom, and Telecom Tech Corp.,WIPO Case No. D2012-2399; The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924; Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Private Whois, WIPO Case No. D2012-0383; Royal Copenhagen A/S v. Private - EXP 2, WIPO Case No. D2012-0637 and KinderCare Learning Centers LLC v. Privacy P, WIPO Case No. D2011-1890 (outlining the First Registrar’s conduct from 2009 to 2011).
As a result of such conduct, ICANN terminated the First Registrar’s Registrar Accreditation Agreement (“RAA”). Such termination was effective from March 20, 2013. ICANN initiated the transition process of the domain names managed by the First Registrar to other qualified ICANN-accredited registrars from the date of the Notice of Termination (February 20, 2013).
On March 28, 2013, the Second Registrar confirmed that it was the registrar of the Domain Name and that the registrant of the Domain Name was “URLBrokeringcom”.
Thus, there have been three different registrants since the filing of the Complaint:
1) “Bargain Register, Inc. – Client services”, the registrant of record at the time of filing of the Complaint on January 25, 2013;
2) “Telecom Tech Corp”, the registrant of record at the time when the First Registrar transmitted to the Center its verification response on February 1, 2013; and
3) “URLBrokeringcom”, the registrant of record according to the publicly-available WhoIs database on February 6, 2013 and to the Second Registrar’s verification response.
Whether the First Registrar was the actual holder of the Domain Name or was simply acting as a proxy for the actual holder remains unclear. The Panel also refrains from making any determination on whether all of the aforementioned entities can be considered as the same entity acting as the First Registrar’s alter ego.
In view of the change of registrant details and the uncertainty surrounding the identity of the registrant, the Panel deems appropriate to designate all of the above named entities as the Respondent in the present proceedings. B. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainant has rights in a term to which the Domain Name is identical or confusingly similar.
Whilst the Complainant provided a list of trademark registrations, the Panel notes that the Complainant did not submit supporting evidence to this effect, such as the corresponding registration certificates or extracts from the online database of the corresponding intellectual property office. Notwithstanding this deficiency, the Panel is satisfied that the Complainant has prior rights in the term “ig markets” which is incorporated in the Domain Name.
The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term “ig markets” in which the Complainant has rights.
The Domain Name consists of the term “ig market” and the gTLD suffix “.net”. The Panel accepts the Complainant’s contention that the removal of the letter “s” is insufficient to distinguish the Domain Name from the Complainant’s IG MARKETS trademark. Furthermore, it is widely accepted that the gTLD, such as “.net”, is generally irrelevant for the purpose of assessing confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, as follows:
“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 [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the Domain Name, even if [the respondent] ha[s] acquired no trademark or service mark rights; or
(iii) [the respondent] is 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”.
Whilst the burden of proof rests with the complainant, it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted that a complainant must first show a prima facie case that a respondent lacks rights or legitimate interests in the domain name, and then this burden of production shifts to the respondent.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that showing.
There is no evidence suggesting that the Respondent is affiliated with the Complainant, is commonly known by the Domain Name or has obtained any licence or authorization to use the Complainant's IG MARKETS trademark.
Neither is there evidence suggesting that the Respondent is using, or has made preparations to use, the Domain Name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Complainant submits that the Domain Name points to a parking page containing sponsored links. The Panel notes that the screen capture of the website associated with the Domain Name submitted by the Complainant as Annex 11 seems to relate to a different domain name (). Notwithstanding this additional deficiency, the Panel has accessed the website associated with the Domain Name and has also relied on a screen capture taken by the Center and confirms that the website associated with the Domain Name contains sponsored links.
In the present case, the Panel notes, firstly, that whilst the term “market” may be descriptive or generic, the association of “market” with the acronym “ig” does not seem to have any other meaning except in relation to the Complainant’s distinctive IG MARKETS trademark. Secondly, the Panel observes that the sponsored links on the website associated with the Domain Name relate to identical goods or services for which the Complainant’s IG MARKETS trademarks have been registered, namely trading and financial services. Therefore, the Panel finds that the use of the Domain Name for a parking page displaying sponsored links for goods and services related to the Complainant’s same business activity (i.e. trading and financial services) cannot possibly constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, given that the Respondent is clearly profiting from the trademark value attached to the Complainant’s IG MARKETS trademark to misleadingly divert consumers to the Respondent’s website.
Finally, this Panel considers the Respondent’s failure to respond to the Complaint is an additional indication of the lack of rights and legitimate interests of the Respondent in the Domain Name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances that may indicate that the Domain Name was registered and used in bad faith. Those circumstances are:
“(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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 disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
The terms “ig” and “market”, whether in its singular or plural form, jointly do not seem to have any other meaning except in relation to the Complainant. Furthermore, the evidence submitted by the Complainant shows that the Complainant’s IG MARKETS trademarks have acquired substantial goodwill and reputation in the online trading industry throughout the world. The Panel therefore finds that the Respondent was in all likelihood well aware of the Complainant and its rights in the term “ig markets” at the time of registration of the Domain Name.
This is more so particularly evident considering the Respondent’s use of the Domain Name for a parking page containing sponsored links to goods and services identical to those of the Complainant. The Panel thus finds that by using the Domain Name in such a way the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, within the meaning of paragraph 4(b)(iv) of the Policy.
Finally, the Panel views the Respondent’s failure to respond to the Complainant’s cease and desist letter and follow up emails as an additional element supporting a finding of bad faith registration and use of the Domain Name.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
David Taylor
Sole Panelist
Date: May 23, 2013
Full & Egal Universal Law Academy