The first complainant is NYSE Group, Inc. of New York, New York, United States of America and the second complainant is Euronext N.V. of Amsterdam, the Netherlands, both represented by Arent Fox LLP, United States of America (together, the “Complainant”).
The respondent is Guerrilla SMO Limited First of Belize, Belize (the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 30, 2013.
On August 26, 2013, the Center received an email communication from the Respondent. On August 27, 2013, the Center informed the Respondent regarding the proceeding and how it could file a response to the Complaint.
The Center verified that the Complaint together with the amended 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 September 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 24, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on September 30, 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. 4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. the first complainant provides a market for the trading of securities by reference to, inter alia, the registered trade mark NYSE1, first used in commerce in 1863;
2. the second complainant provides a market for the trading of equities and derivatives by reference to, inter alia, the registered trade mark EURONEXT2, first used in commerce in 2000;
3. in 2007 the first complainant and the second complainant merged their business;
4. the Complainant has registered, inter alia, the trade mark NYSE EURONEXT3, which it has used in commerce since that 2007 merger;
5. the disputed domain names were registered in June and July of 2009;
6. at the time the Complaint was filed, the disputed domain names resolved to websites which carried links to other websites offering financial and investment services;
7. there has been no commercial or other relationship between the parties and neither the Complainant, nor the first or second complainant, has authorized the Respondent to use its trademarks or register any domain name incorporating its trade marks. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in NYSE, EURONEXT, and NYSE EURONEXT and alleges that the disputed domain names are confusingly similar to one or more of the trade marks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a Response. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
The Complainant submits that the disputed domain name is confusingly similar to the EURONEXT trade mark and that the domain name is confusingly similar to the NYSE EURONEXT trade mark.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
For the purposes of paragraph 4(a)(i) of the Policy, it is accepted that a trade mark registered with a national authority is evidence of trade mark rights4. The Panel therefore finds that the Complainant has rights in NYSE EURONEXT acquired through (joint) registration. On the other hand, it is only the second complainant that holds the registration for EURONEXT. There is no evidence of, or claim to, a license on the part of the Complainant to use the EURONEXT trade mark solus, and given the apparent structure of the registered ownerships, the Panel questions whether one exists. Nonetheless, in the absence of any contest by the Respondent, the Panel is prepared to accept that the Complainant has trade mark rights of a kind5 in EURONEXT.
The remaining question is whether the disputed domain names are confusingly similar to the respective trade marks. For the purposes of testing confusing similarity, the generic top-level domain, “.com”, can be ignored.6 The comparisons then reduce to (i) EURONEXT with “euronextlistings”, and (ii) NYSE EURONEXT with “nyseeuronextlistings”.
The added word “listings” is wholly lacking distinctiveness in the context of the Complainant’s services. Moreover, its presence, if it does anything, is to help identify the trademarks and dispel any possible first impression that the disputed domain names are a meaningless cacophony of letters.
The Panel finds the disputed domain names to be confusingly similar to the Complainant’s trade marks.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to both disputed domain names. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests7.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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 publicly available WhoIs database identifies the registrant as “Guerrilla SMO Limited First” and so does not support any conclusion that the Respondent might be commonly known by the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not.
At the time the Complaint was filed the disputed domain names resolved to websites which carried links to other websites offering financial and investment services. Those services compete with the Complainant’s interests. There is no evidence of use of the domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy with respect to both disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(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.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy above. The Panel has already found the disputed domain names to be confusingly similar to the Complainant’s trade marks. Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names. The Panel notes hyperlinks to various commercial websites offering services competitive with the Complainant’s business. The Panel accepts as more likely than not to be true that the Respondent receives revenue from the websites associated with the disputed domain names. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that it is more likely than not that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trade marks.
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy in respect of both disputed domain names. 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 names and be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: October 7, 2013
1 USPTO Registration No. 909,350 dated March 2, 1971.
2 USPTO Registration No. 3,689,802 dated February 25, 2003.
3 USPTO Registration No. 3,603,163 dated April 7, 2009.
4 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
5 See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) The UDRP is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy.
6 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
7 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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