Complainant is Euromoney Institutional Investor PLC of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Dechert, United Kingdom.
Respondent is Eric Chen, Topsky Inc. of Newmarket, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 25, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 1, 2016. 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
Complainant states that it is "listed on the London Stock Exchange with 2,300 employees worldwide"; that it is "one of the world's leading publishers of business and financial magazines, publishing more than 100 magazines, newsletters and journals as well as surveys, directories, books and maps"; that it publishes Euromoney magazine, which was founded in 1969 and is read every month by "63,000 financial industry professionals"; and that it "runs business conferences, seminars and training courses, and is a leading provider of electronic business information through its capital markets databases and its Internet-based emerging markets information service."
Complainant states, and provides evidence to support, that it is the owner of "a substantial portfolio of trade mark registrations globally," including the following that include the word "Euromoney" (hereafter, the "EUROMONEY Trademark"):
- European Union Registration No. 6,651,186 for EUROMONEY (registered January 22, 2009)
- United States of America Registration No. 975,031 for EUROMONEY (registered December 18, 1973)
- United Kingdom Registration No. 993,688 for EUROMONEY (registered June 14, 1972)
- United Kingdom Registration No. 1,306,427 for EUROMONEY (registered January 31, 1992)
- United Kingdom Registration No. 1,308,579 for EUROMONEY (registered September 28, 1990)
The Disputed Domain Name was created on January 6, 2016.
Complainant states, and provides evidence to support, that the Disputed Domain Name is being used in connection with a website that purports to provide financial and investment news.
Complainant states that it sent a cease and desist letter to Respondent about the Disputed Domain Name on June 6, 2016, but has not received a response. 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the EUROMONEY Trademark because it "includes the [EUROMONEY Trademark] in its entirety without any modification."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "[t]he Respondent's use of a [d]omain [n]ame which is identical to the Complainant's [t]rade [m]ark on a website offering products which are identical to those of the Complainant cannot be considered as a bona fide offering of goods or services"; "[t]here is no obvious reason why the [Disputed] Domain Name has been selected by the Respondent for the website, leading to the suggestion that it was selected to trade off the reputation of the Complainant's [EUROMONEY Trademark]"; "Respondent appears to be using the [Disputed] Domain Name for commercial purposes"; "[t]he Complainant has not licensed or otherwise permitted or authorised the Respondent to use its [t]rade [m]ark or to apply for a domain name incorporating the [t]rade [m]ark"; and "[a]s far as the Complainant is aware the Respondent's name does not include the [t]rade [m]ark or anything similar and it is not commonly known by the [t]rade [m]ark."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "[t]he Respondent's use of the [EUROMONEY Trademark] in the [Disputed] Domain Name, and also on its [i]nfringing [w]ebsite, is intended to lead consumers to believe that they have reached the Complainant's website and so divert Internet traffic from the Complainant thereby interfering with the Complainant's business"; and "[g]iven that the Complainant's business is internationally renowned and that the Complainant has significant goodwill, reputation and registered trade mark protection in the [EUROMONEY Trademark], it is inevitable that Internet users will be confused into believing that any website at the [Disputed] Domain Name is registered to, operated or authorised by the Complainant." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the EUROMONEY Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the EUROMONEY Trademark, the relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., "euromoney"), as it is well established that the Top-Level Domain (i.e., ".market") may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
Given that the second-level portion of the Disputed Domain Name is identical to the EUROMONEY Trademark, it is self-evident that the Disputed Domain Name is identical or confusingly similar to the EUROMONEY Trademark for purposes of the Policy.
Furthermore, although the Panel disregards the Top-Level Domain ".market" for purposes of assessing confusing similarity, the Panel notes that, if anything, the Respondent's selection of this Top-Level Domain only increases the confusing similarity given that "market" is closely associated with the services used in connection with the EUROMONEY Trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "[t]he Respondent's use of a [d]omain [n]ame which is identical to the Complainant's [t]rade [m]ark on a website offering products which are identical to those of the Complainant cannot be considered as a bona fide offering of goods or services"; "[t]here is no obvious reason why the [Disputed] Domain Name has been selected by the Respondent for the website, leading to the suggestion that it was selected to trade off the reputation of the Complainant's [EUROMONEY Trademark]"; "Respondent appears to be using the [Disputed] Domain Name for commercial purposes"; "[t]he Complainant has not licensed or otherwise permitted or authorised the Respondent to use its [t]rade [m]ark or to apply for a domain name incorporating the [t]rade [m]ark"; and "[a]s far as the Complainant is aware the Respondent's name does not include the [t]rade [m]ark or anything similar and it is not commonly known by the [t]rade [m]ark."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 registrant's website or location.
Policy, paragraph 4(b).
Complainant has argued that the Disputed Domain Name "was registered approaching 50 years after the Complainant's business was founded and started trading under the [EUROMENEY Trademark] and the Complainant has substantial goodwill, reputation and registered Trade Mark rights in the [EUROMONEY Trademark]."
In this case, Complainant argues that bad faith exists, among other reasons, pursuant to paragraphs 4(b)(iii) and 4(b)(iv) because, inter alia, "[t]he Respondent's use of the [EUROMONEY Trademark] in the [Disputed] Domain Name, and also on its [i]nfringing [w]ebsite, is intended to lead consumers to believe that they have reached the Complainant's website and so divert Internet traffic from the Complainant thereby interfering with the Complainant's business"; and "[g]iven that the Complainant's business is internationally renowned and that the Complainant has significant goodwill, reputation and registered trade mark protection in the [EUROMONEY Trademark], it is inevitable that Internet users will be confused into believing that any website at the [Disputed] Domain Name is registered to, operated or authorised by the Complainant."
Here, the Panel agrees with Complainant's reference to Cube Limited v. Yanting Li,WIPO Case No. D2015‑0853, in which the panel found bad faith where the disputed domain name was used in connection with a website offering "services in direct competition with those offered by the Complainant." Here, the financial and investment news offered on the website associated with the Disputed Domain Name is in direct competition with the services offered by Complainant under the EUROMONEY Trademark.
Accordingly, the Panel finds that Complainant has proven the third element 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 Disputed Domain Name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: August 15, 2016
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