The Complainant is Euronext N.V of Amsterdam, Netherlands, represented by NLO Shieldmark B. V., Netherlands.
The Respondent is Richael Sanar, Euronext Market Limited of Godalming, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “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 November 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 23, 2017.
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 November 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 9, 2018. 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 is one of the leading stock market providers in Europe. Euronext facilitates the stock market and provides a diverse range of products and services in, amongst others, Paris, Amsterdam, Brussels and Lisbon.
The Complainant owns several trademark rights registered since 2012 composed of the term “EURONEXT”. It owns several trademarks in the EURONEXT sign, notably:
- European Union Trade Mark EURONEXT, registration no. 011000627, registered on December 5, 2012;
- International Trademark EURONEXT, registration no. 013343629, registered on March 3, 2015 (collectively, the “EURONEXT Trademarks” or “Trademarks”).
The Domain Name was registered on October 12, 2016. It resolves to a website reproducing the Complainant’s trademark and offering similar services to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s EURONEXT Trademarks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant argues that the Domain Name reproduces the EURONEXT sign which matches the Complainant’s Trademarks, thus the Complainant indicates that the Domain Name is identical or confusingly similar to the Complainant’s EURONEXT Trademarks. Indeed, the addition of the descriptive term “market” is not likely to avoid a likelihood of confusion between the Domain Name and the Complainant’s prior trademarks rights. In this regard, the Complainant reminds the Panel of the case, e.g., Eauto, L.L.C. v. Eauto Parts,WIPO Case No. D2000-0096; and Komatsu Ltd. V. RKWeb Ltd,WIPO Case No. D2000-0995 in which the panel considered that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words.
The Complainant further argues that there are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the Domain Name or a domain name corresponding to the EURONEXT Trademarks. The Respondent is using the Domain Name which refers to a website which reproduces the Complainant’s Trademark and offer similar services to the Complainant. The Complainant argues that it does not constitute a bona fide offering of goods according to the “Oki Data” criteria. In this respect, Complainant alleges that the Responded pretends untruthfully to have a partnership with Euronext. Also other well-known stock exchange brands such as NASDAQ, NYSE and London Stock exchange are shown as partners on the website. Assessing these requirements, it is clear to the Complainant that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant further argues that the Domain Name was registered and is being used in bad faith. It argues that the Domain Name was registered with the aim of taking advantage of the reputation of the Complainant’s EURONEXT Trademarks. Therefore, the Complainant further argues that the only reason for the similarity between the Trademark and the Domain Name is that the Respondent intends to confuse the Complainant’s customers and potential customers and to subvert the Complainant’s business. The Respondent’s use of the Domain Name is an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademarks as to source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service of that website.
For all the above reasons, the Complainant requests the transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is, therefore, in default. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its registered trademark rights in EURONEXT.
The Domain Name consists of the Complainant’s EURONEXT Trademarks, together with the descriptive term “market”. This is sufficient to find confusing similarity in the sense of the Policy. See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts,WIPO Case No. D2015-1384; and ERGO Versicherungsgruppe AG v. Idealist,WIPO Case No. D2008-0377 (where the panel found the combination of the trademark ERGO in the second level of the domain name together with the term “finance” to be confusingly similar to the trademark in question).
Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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 relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; and Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022.
The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorized and licensed by the Complainant to register and use the Domain Name which incorporates the Trademarks. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name resolves to website that reproduces the Trademarks, with an untruthful or misleading statement and offers similar services as the Complainant’s activity, all of which does not correspond to a bona fide offering of goods or services nor, in the circumstances of this case, to a legitimate noncommercial or fair use of the Domain Name.
The Panel also holds that in the present case, the Respondent cannot rely on the so-called “Oki Data” test, given that the Domain Name is being used to point to a website that displays information in relation with the Complainant, in which it reproduces the Complainant’s Trademark and for which it has not been given any authorization by the Complainant. This together with the untruthful or misleading statement creates a deceiving impression of association between the Domain Name, the Complainant, and its Trademarks. Additionally, Respondent cannot be said to be making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy either.
The Panel finds that the Complainant has made out a prima facie case, calling for an answer from the Respondent. The Respondent has not filed a response and is therefore in default, thus, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent registered and is using the Domain Name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the EURONEXT Trademarks at the time the Respondent registered the Domain Name. The Complainant has submitted evidence, which shows that the Respondent registered the Domain Name long after the Complainant registered its Trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the EURONEXT trademark since at least the year 2012. It is suggestive of the Respondent’s bad faith in these particular circumstances that the EURONEXT Trademarks, owned by the Complainant, were registered long before the registration of the Domain Name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The word “euronext” refers directly to the Complainant’s Trademarks and company name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that combines a reproduction of the Trademarks in its entirety and the adjunction of a descriptive word that refers to the Complainant’s main activity unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant’s EURONEXT Trademarks.
The disputed domain name is confusingly similar to the Complainant’s Trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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.
Nathalie Dreyfus
Sole Panelist
Date: January 23, 2018
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