The Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Michael Smith of London, United Kingdom of Great Britain and Northern Ireland / Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2015. On September 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2015, 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 2, 2015 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 2, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2015.
The Center appointed Jane Lambert as the sole panelist in this matter on November 16, 2015. 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 established in 1974 and claims to be the world's first financial spread betting firm and a global leader in online trading, providing fast and flexible access to more than 10,000 financial markets including shares, indices, foreign exchange, commodities and binary making millions of transactions per month with more than 125,000 clients and a market capitalization of EUR 2.2 billion. It has offices in 19 cities including Amsterdam, Bangalore, Beijing, Chicago, Dubai, Dublin, Dusseldorf, Geneva, Johannesburg, London, Luxembourg, Madrid, Melbourne, Milan, Oslo, Paris, Singapore, Stockholm and Tokyo. It has been operating on the Internet since 1998, when it launched its first online dealing platform.
It has registered trade marks that consist of or include the letters "ig" as trade marks for goods and services in several classes in many countries. By way of example the Complainant has registered IG as a Community trade mark under registration number EU1895069 of March 24, 2003 for the following goods and/or services:
Case
Specified Goods and/or Services
9
Computer software and computer programs; computer apparatus; data carriers; provision of on-line electronic publications (downloadable) from the Internet, databases, or databanks; encoded magnetic cards, all relating to financial, betting, gambling and/or gaming services.
16
Printed matter and printed publications; books; journals; magazines; periodical publications; newsletters; handbooks and directories; calendars; diaries; stationery; writing instruments.
36
Credit card, debit card and charge card betting services; information services relating to the aforesaid.
41
Betting, gambling and gaming services; on-line betting, gambling and gaming services; off shore betting, gambling and gaming services; information services relating to all the aforesaid.
The disputed domain name has been used as the URL for a website at "www.". That website looks very much like the Complainant's site and purports to offer a similar range of financial services. The letters "ig" in the same style as on the Complainant's site appear prominently on that site though the colors are reversed.
The Complainant has exhibited evidence of actual confusion. One of the Complainant's customers wrote:
"I have received an offer to deposit my funds with IG Trades and for these funds to be managed for me by the company. Is this company in any way connected to IG Markets LTD or is this an alone standing company that is in no way affiliated with IG Markets LTD? The main concern has risen, because they use IG's trademark on their website, however no information about this company is mentioned on your actual website."
Very little is known about the persons responsible for the "www." website other than that the disputed domain name had been registered with Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States. When the Center requested verification, the Registrar replied that the disputed domain name was registered with one Michael Smith and provided a London postal address and a North American telephone number. 5. Parties' Contentions A. Complainant
The Complainant asks for the transfer of the disputed domain name on the following grounds:
- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
As to the first ground the Complainant refers to its many trade mark registrations around the world including Community trade mark number EU1895069. It notes that the disputed domain name incorporates the corresponding marks in their entirety, and that the addition of the word "trades" adds to the likelihood of confusion because the Complainant offers trading services. The Complainant refers to numerous decisions in cases with similar facts where the panel has held that the domain name in suit to have been confusingly similar to a trade mark or service mark.
As to the second, the Complainant avers that it has never assigned, granted, licensed, sold, transferred or in any way authorized either Respondent to register or use its IG trade mark in any manner. The Complainant quotes the decision in Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272 to the effect that the fact on its own can be sufficient to satisfy the second criterion of the Policy. To the best of the Complainant's knowledge and belief the Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the person or persons responsible for the website at "www." appears to pass off business and services offered at that site as those of the Complainant. Again to the best of the Complainant's knowledge and belief, the Respondent has never been known by the disputed domain name and has never acquired any trade mark or service mark rights in the same.
Citing Six Continents Hotels, Inc. v. NA InterMos,WIPO Case No. D2006-1313, the Complainant says that by using the disputed domain name without its permission in connection with a website that falsely appears to be associated with the Complainant, the Respondent "intentionally uses the domain name… aiming to profit from Complainant's renowned trade mark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant's, disrupting Complainant's business". The Complainant contends that such use constitutes bad faith for the purposes of the Policy in that the Respondent had registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy.
Further, referring to Six Continents Hotels, Inc. v. Finlaw Agency and ResS, Inc.,WIPO Case No. D2002-1159 and also to Six Continents Hotels, Inc., v. Bunjong Chaiviriyawong,WIPO Case No. D2013-1942, the Complainant argues that the Respondent has "intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the IG Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website, in violation of paragraph 4(b)(iv) of the Policy."
In the Complaint, the Complainant submits that the registration of a domain name that Is the same or confusingly similar to the mark of a business that is as well-known as the Complainant's is of itself an act of bad faith and mentions a number of authorities to that effect. In a supplemental statement of case headed "Amendment to Complaint" and dated October 2, 2015 the Complainant says that the registrar's response to the Center's request for registrar verification indicates an attempt at cyber flight which is further evidence of bad faith. Finally, the Complainant contends that the Respondent's failure to acknowledge and reply to its letters before claim is yet more evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent's agreement to register the disputed domain name incorporated paragraph 4(a) of the Policy by reference:
"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present." A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The Complainant is the registered proprietor of Community trade mark number EU1895069 by which IG is registered for a range of goods and services in classes 9, 16, 36 and 41. For the purposes of paragraph 4 (a)(i) of the Policy that trade mark is one in which the Complainant has rights. The Respondent has added the words "trades" to the trade mark. The Complainant's business includes trading in various markets. Thus the additional word exacerbates the likelihood of confusion rather than diminishes it. B. Rights or Legitimate Interests
The Panel is satisfied that the second element is present.
Paragraph 4(c) of the Policy lists a number of circumstances which, if proved, shall demonstrate rights or legitimate interests to a disputed domain name for the purposes of paragraph 4(a)(ii) above. The Complainant asserts that none of those circumstances applies and there is no evidence to contradict it. If such evidence exists the Respondents could have challenged the Complainant's assertion but they have not done so. C. Registered and Used in Bad Faith
Paragraph 4(b) lists a number of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include in sub-paragraph (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 has already found the disputed domain name to be confusingly similar to a trade mark in which the Complainant has rights. It therefore follows that the uses of the disputed domain name creates "a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement" of the Respondent's website. The website at "www." offers a range of services which are likely to be for commercial gain. Thus, paragraph 4(b)(iv) appears to be satisfied.
In the absence of any evidence to the contrary or explanation from the Respondent, the Panel finds that the disputed domain name was registered and is being used in bad faith. Accordingly, the third element is present. 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.
Jane Lambert
Sole Panelist
Date: November 26, 2015
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