The Complainant is The Depository Trust & Clearing Corporation, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Guillaume, Guillaume Kuffler, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2020, 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 March 20, 2020, 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 amended Complaint on March 25, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on April 23, 2020. 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 world’s preeminent providers of post-trade, clearance, and settlement services to the global financial sector. The Complainant has been providing global platforms that facilitate the clearance and settlement of securities transactions for many years and has done so under name THE DEPOSITORY TRUST & CLEARING CORPORATION since 1999. The disputed domain name was registered on February 7, 2020, and redirects to a blank holding page. 5. Parties’ Contentions A. Complainant Since adopting the name THE DEPOSITORY TRUST & CLEARING CORPORATION in 1999, the Complainant submits that it has become one of the preeminent global providers of post-trade services to the financial services community. It says that it is industry owned and through its subsidiaries processes over 100 million financial transactions daily and provides post-trade services, including clearing, settlement, and information services to thousands of broker/dealers, banks, and asset managers in the United States and elsewhere in the world. It is noted in evidence submitted by the Complainant that in 2011 the Complainant or its subsidiaries settled the vast majority of securities transactions in the United States and close to USD 1.7 quadrillion in value worldwide, making it by far the highest financial value processor in the world. The Complainant submits that it trades under the name or mark THE DEPOSITARY TRUST & CLEARING CORPORATION and under the mark DTCC, being the acronym for its trade name and mark, and enjoys long standing common law usage rights through continuous and exclusive usage. It notes that it has various trade mark registrations worldwide for, or incorporating, the DTCC acronym, including in particular United States combined word and logo services mark registration 2593532 (registered on July 16, 2002), United States word mark registration number 5309424 (registered on October 17, 2017), and European Union word mark registration 016190035 (registered on August 9, 2017). It says that its various trade mark registrations for DTCC afford it exclusive right to use DTCC in association with financial transactional goods and services throughout the territories covered by those marks as well as the right to prevent others from using the same or similar marks in a way that is likely to cause confusion among consumers. The Complainant submits that this extends to its full trading name THE DEPOSITORY TRUST & CLEARING CORPORATION, which it says is undeniably tied to the DTCC mark and has acquired secondary meaning in the minds of consumers and is well known globally through continuous use since 1999 The Complainant says that the disputed domain name, In addition, submits the Complainant, the disputed domain name is also confusingly similar to the Complainant’s DTCC marks. DTCC is a well-known acronym for THE DEPOSITORY TRUST & CLEARING CORPORATION. The marks DTCC and THE DEPOSITORY TRUST & CLEARING CORPORATION are virtually identical in commercial impression, through the Complainant’s extensive use of both marks for over 20 years. As a result, the Complainant submits that the disputed domain name is confusingly similar to the Complainant’s THE DEPOSITORY TRUST & CLEARING CORPORATION trade mark and to its DTCC registered trade marks. The Complainant submits that the Respondent is unable to provide evidence sufficiently establishing rights or legitimate interests, because it says: (i) the Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not acquired or owned any trade mark or service mark rights in the names THE DEPOSITORY TRUST & CLEARING CORPORATION or DTCC, and has not been commonly known by the disputed domain name or authorised or licensed by the Respondent to use it; and (iii) the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Instead, submits the Complainant, the Respondent’s registration of the disputed domain name is clearly with an intent for commercial gain and to misleadingly divert consumers or to tarnish the Complainant’s rights in its trade marks. Considering the composition of the disputed domain name, says the Complainant, it is difficult to conceive of a plausible scenario under which anyone other than the Complainant could register and use the disputed domain name without infringing the Complainant’s trade mark rights in the marks THE DEPOSITORY TRUST & CLEARING CORPORATION or DTCC. In view of the nature of the disputed domain name and the delay between the time that the Complainant first adopted its name in 1999 and when the Respondent registered the disputed domain name, the Complainant concludes that the Respondent’s unauthorised registration of the disputed domain name was intended to cause and exploit confusion between the Complainant’s name and trade marks and the disputed domain name. The Complainant submits that the fact that the disputed domain name resolves to a blank parking page amounts to passive use in bad faith and that all four factors relevant to a finding of bad faith are made out here. Firstly, the Complainant submits that its marks, being THE DEPOSITORY TRUST & CLEARING CORPORATION mark and each of the DTCC marks, are highly distinctive and carry a reputation synonymous with the highest quality of post-trade financial services around the world. It says that by registering a disputed domain name that is virtually identical to the mark THE DEPOSITORY TRUST & CLEARING CORPORATION and suggestive of the DTCC marks, the Respondent has exclusively identified the Complainant as the subject of the disputed domain name and as its intended user. Secondly, according to the Complainant, the Respondent cannot provide evidence of actual or contemplated good-faith use. Because the disputed domain name incorporates the Complainant’s THE DEPOSITORY TRUST & CLEARING CORPORATION mark (with only negligible typographical modifications), it is difficult, says the Complainant, to conceive of any non-infringing use of the disputed domain name, whether by the Respondent, or anyone other than the Complainant. It is also impossible, says the Complainant, to believe that the combination of terms set forth in the disputed domain name was accidental or without intent to mimic the Complainant’s THE DEPOSITORY TRUST & CLEARING CORPORATION mark. Thirdly, the Complainant submits that the fact that the Respondent has not submitted any contact information at the disputed domain name shows an intent to conceal the Respondent’s identity from the Complainant and that the Respondent has deliberately excluded any way to contact the Respondent at the disputed domain name’s website or otherwise. Finally, says the Complainant, it is implausible for the Respondent, or anyone other than the Complainant, to make non-infringing use of a domain name that incorporates the Complainant’s THE DEPOSITORY TRUST & CLEARING CORPORATION trade mark, with only negligible typographical modifications. The intention to infringe is further supported by the Complainant’s discovery that the disputed domain name has an MX record and a Sender Policy Framework (SPF) attached which it says, in the circumstances, can only be evidence of the Complainant’s intention to mislead consumers of the Complainant into believing that emails associated with the disputed domain name are in fact affiliated with the Complainant, in the furtherance of a fraud or phishing scheme. As a result, says the Complainant, the disputed domain name has been both registered and used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant trades under the name or mark THE DEPOSITORY TRUST & CLEARING CORPORATION and owns registered trade mark rights for the acronym DTCC. While it does not own registered trade mark rights for THE DEPOSITORY TRUST & CLEARING CORPORATION mark it has made very substantial use of it since its adoption of the name in 1999. The Complainant has submitted evidence to support its claim that it is one of the preeminent global providers of post-trade services to the global financial services community. Based on this information it processes over 100 million financial transactions daily and provides post-trade services, including clearing, settlement, and information services to thousands of broker/dealers, banks, and asset managers in the United States and elsewhere in the world. In 2011, there is evidence on the record suggesting that the Complainant or its subsidiaries settled the vast majority of securities transactions in the United States and close to USD 1.7 quadrillion in transaction value worldwide making it the highest financial value processor in the world at that time. It appears to the Panel that the Complainant’s name and mark, THE DEPOSITORY TRUST & CLEARING CORPORATION, is therefore extremely well reputed and in addition the Panel notes that it is very distinctive. In these circumstances, the Panel finds that the Complainant has successfully made out the case that its unregistered name and mark is a distinctive identifier that relevant users would associate with the Complainant’s financial clearing services. As a consequence the Panel finds that THE DEPOSITORY TRUST & CLEARING CORPORATION name or mark comprises relevant trade mark rights under this part of the Policy. The disputed domain name, other than the “.com” Top-Level Domain element, is identical to the Complainant’s unregistered trade mark rights with the exception of the letter “a” in “depositary”, the shortening of “corporation” to “corp”, and the use of the word “and” in place of the ampersand sign. These are non-distinctive differences and the Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s unregistered trade mark THE DEPOSITORY TRUST & CLEARING CORPORATION. As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent is unable to provide evidence sufficiently establishing rights or legitimate interests, because it says: (i) the Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not acquired or owned any trade mark or service mark rights in the names THE DEPOSITORY TRUST & CLEARING CORPORATION or DTCC, and has not been commonly known by the disputed domain name or authorised or licensed by the Respondent to use it; and (iii) the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Considering the very distinctive nature of the Complainant’s unregistered trade mark right, the Panel does find it difficult to conceive of a plausible good faith scenario under which the Respondent could have intended to use the disputed domain name. The registration of the disputed domain name in 2020, long after the Complainant had developed very significant reputation and goodwill in connection with its name and mark only serves to reinforce this view. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered in February 2020, long after the Complainant commenced business under its very distinctive name and mark, THE DEPOSITORY TRUST & CLEARING CORPORATION. Considering the level of distinctiveness of this name and that it was extremely well known, even by 2011, then based on the evidence submitted by the Complainant as described under Part B above, the Panel considers that the Respondent is more likely than not to have been well aware of the Complainant’s mark at the date of registration of the disputed domain name and that the Respondent registered it with slight differences more likely than not to typosquat the Complainant’s name and mark. The disputed domain name redirects to a blank holding page. Previous panels, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, have found that a passive holding of a disputed domain name can amount to use in bad faith depending on particular factors, including (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put. As noted under Part A above, the Panel finds that the Complainant’s name or mark THE DEPOSITORY TRUST & CLEARING CORPORATION is very distinctive and has developed a very substantial reputation to the extent that it is likely to be exceedingly well known in the global financial services market. The Respondent has failed to provide evidence of actual or contemplated good-faith use and considering the degree of distinctiveness of the Complainant’s name and mark and the degree of reputation attaching to it, the Panel thinks it unlikely that it was developed accidentally or that there is in fact evidence of contemplated good faith use capable of being produced by the Respondent. Finally, the Panel agrees with the Complainant that it is implausible for the Respondent to have had an innocent intention in choosing the disputed domain name in circumstances that it incorporates the Complainant’s distinctive THE DEPOSITORY TRUST & CLEARING CORPORATION trade mark, with only negligible typographical modifications. If the Respondent had an intention to make a legitimate noncommercial use of the disputed domain name, then he would have defended this Complaint accordingly. An inference that the Respondent registered the disputed domain name in bad faith is further supported by the Complainant’s discovery that the disputed domain name has an MX record and a Sender Policy Framework (SPF) attached which, while not being definitive, might possibly be indicative of an intention by the Respondent to embark on some kind of fraud or phishing scheme. Overall, the Panel finds that its assessment of the above factors weigh in favor of a finding of bad faith use of the disputed domain name by the Respondent. Based on its findings above, the Panel holds that the disputed domain name was both registered and used in bad faith and that the Complaint also succeeds under this 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 Alistair Payne
Sole Panelist
Date: April 30, 2020
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