The Complainant is The Depository Trust & Clearing Corporation, United States of America (the “United States”), represented by Day Pitney LLP, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Zhichao, China. 2. The Domain Names and Registrar
The disputed domain names Dynadot, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 9, 2020, 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. The Center sent an email communication to the Complainant on April 9, 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 April 15, 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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020. The Center appointed Emmanuelle Ragot as the sole panelist in this matter on May 12, 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 This dispute concerns the domain names The Depository Trust & Clearing Corporation (“DTCC” or “the Company”), is one of the world’s preeminent providers of post-trade services to the global financial community, including clearing, settlement, and institutional trade processing services, a United States corporation incorporated and existing under the laws of the State of New York. The Company has been providing global platforms that facilitate the clearance and settlement of securities transactions for over 40 years, and has done so under the DTCC trademark for decades all under the trademark DTCC (hereinafter, the “DTCC Mark”), major asset of the Company and an important symbol of its reputation and goodwill in the global financial sector. The Company has widely used, registered, and promoted the DTCC brand through its own actions and those of its subsidiaries, and has established a worldwide reputation for excellence including in the United States., Australia, China, European Union, Japan, Mexico, South Korea, Singapore, and United Kingdom. The Company owns a large portfolio of registered trademarks for DTCC, including, inter alia, United States trademark registration No. 2593532 registered on July 16, 2002. DTCC offers health insurance and related benefits to employees. Confidential information about these services is accessible to employees by navigating to “dtcc.benefitcenter.com” and entering employee ID and password information. General information can be found at “www.dtccbenefitsguide.com.” 5. Parties’ Contentions A. Complainant The Complainant asserts that it owns numerous registered trademarks, and it has registered numerous domain names that include the trademark DTCC in many territories. The Respondent has registered and used the disputed domain names which, according to the Complainant, are confusingly similar / identical to the DTCC Marks, i.e. the Complainant group’s trademarks. After examination of the file, no evidence is provided that the Respondent holds any license or any other type of authorization given by the legitimate holders of said trademarks to use the marks. The Complainant also alleges that the disputed domain names containing the identical DTCC Marks, are confusingly similar to the DTCC Marks. The Complainant points out that not only the Respondent’s domain names contain the identical DTCC Marks, but also the terms “benefit” and “benefits” do not prevent a finding of confusing similarity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 (a) of the Rules instructs the Panel to: “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respects of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The term “dtcc” is the essential part of numerous trademarks of the Complainant which are registered in several countries. The disputed domain names are confusingly similar to the Complainant’s marks in which the Complainant enjoys substantial goodwill. In the present case, the Panel does not hesitate to decide that the disputed domain names are confusingly similar to the registered trademarks DTCC. Indeed, the disputed domain names reproduce entirely the Complainant’s trademarks DTCC which have been considered to be “well-known” or “famous” by numerous previous panels. See The Depository Trust & Clearing Corporation v. Name Redacted,WIPO Case No. D2018-1884 (“In the present case, the Complainant has submitted sufficient and uncontested evidence that he holds well established prior rights in the trademark DTCC. The widely-known “DTCC” trademark of the Complainant has no dictionary meaning: it’s a term invented by the Complainant and therefore distinctive for the corresponding services.”) In many WIPO decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. Additionally, the disputed domain names associate the Complainant’s distinctive trademarks DTCC in its entirety and the additional generic words “benefit” and “benefits” which do not prevent confusing similarity between the disputed domain names and the Complainant’s DTCC mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also Milliman, Inc. v. Domain Administrator, See PrivacyGuardian.org/Zhichao Yang,WIPO Case No. D2018-2178; General Electric Company v. Momm Ahmed la,WIPO Case No. D2000-1727; See also The Depositary Trust & Clearing Corporation v. Stewart Scott,WIPO Case No. D2018-2196 (the domain dtccblockchain.com held confusingly similar to the DTCC Mark because “Complainant’s DTCC trade mark is clearly recognizable within the Domain Name.”); The Depositary Trust & Clearing Corporation v. Name Redacted,WIPO Case No. D2018-1884 (regarding the domain dtccglobal.com, the Panel held “the dictionary word “global” is not sufficient to prevent finding of confusing similarity”). Finally, the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name, as it is viewed as a standard registration requirement (See section 1.11 of the WIPO Overview 3.0). Indeed, the mere adjunction of a “gTLD”, such as “.com”, is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877). For all of the above-mentioned reasons, the domain names in dispute are confusingly similar to the trademarks DTCC in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, it found by the Panel to be proved based on is evaluation of all evidences presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purpose of paragraph 4(a)(ii): “(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 the intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue”. It is well established from previous UDRP decisions (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455) that the burden of production shifts to the Respondent where the Complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name. If the respondent fails to rebut the complainant’s case, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the present case, the Complainant states that the Respondent has no rights or legitimate interests with respect to its use of the domain names. Furthermore, there is no evidence in the file showing any of the three circumstances under paragraph 4(c) of the Policy, or any other circumstance that would establish rights or legitimate interest of the Respondent. The Respondent has not submitted any Response and thus failed to demonstrate that he has rights or legitimate interests in the domain names pursuant to paragraph 4(a)(ii) of the Policy. The Panel finds, also in light of the Panel’s findings below, that the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. “(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 website or other online location, by creating the likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. In the case at hand, the disputed domain names have been registered by the Respondent despite the fact that DTCC are known trademarks for financial services. Panels have consistently found that, as is the case with the disputed domain names, the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0”); see also The Depositary Trust & Clearing Corporation v. Stewart Scott,WIPO Case No. D2018-2196; The Depositary Trust & Clearing Corporation v. Name Redacted,WIPO Case No. D2018-1884. Furthermore, the Respondent is not listed as an owner of any trademark containing any DTCC formatives. Nor is there any evidence that the Respondent owns any or has applied for any trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name. On the contrary, it appears clearly established that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Rather, the Respondent is blatantly using the disputed domain names with the intent for commercial gain and to misleadingly divert Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s DTCC Mark as to the source, sponsorship, affiliation, or endorsement of the websites and products advertised at the website under the Rules, paragraph 4(b)(iv). With the knowledge of the Complainant and the Complainant’s services, the Respondent registered and subsequently used the disputed domain names in bad faith to create confusion and attract Internet users seeking the Complainant and the Complainant’s services to the Respondent’s advertisement-laden websites that presumably earn the Respondent a pay-per-click sum. See Gowrings Mobility Group Limited v. Cyber Domain Services Pvt.Ltd. / PrivacyProtect.org,WIPO Case No. D2010-0706. The Respondent has acquired the disputed domain names with no apparent intention of utilizing the domain names in connection with the provision of bona fide goods or services. Rather, the Respondent’s bad faith intent, is to create confusion among consumers as to the source of the domain names for commercial gain. It is likely that the Respondent chose the domain names because of their similarity to a trademark in which the Complainant has rights and legitimate interests. This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s site. See Shaw Industries Group Inc. & Columbia Insurance Company v. Administrator, Domain,WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd/ Mr. Cartwright,WIPO Case No. D2007-0267. The Respondent’s unauthorized and unapproved hijacking of employees and/or customers searching for the Complainant to the Respondent’s website is solely for the purpose of achieving commercial gain. Such behavior has been found by many panels to constitute bad faith registration and use. See NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768; Tarjeta Naranja SA v. Mr. Dominio.com and Alejandro San Jorge,WIPO Case No. D2001-0295. On its websites, the Respondent has links that divert the Internet users to third party services that are not associated with the Complainant. The Panel notes that the Complainant’s domain names and DTCC trademark registrations significantly predate the registration date of the disputed domain names. In this regard, previous panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration (ALSTOM v. Domain Investments LLC,WIPO Case No. D2008-0287, and NBC Universal Inc. v. Szk.com / Michele Dinoia,WIPO Case No. D2007-0077). A quick DTCC trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226). Hence, in view of the above-mentioned circumstances, it is inconceivable that the Respondent did not have the Complainant’s trademarks in mind at the time of registration of the disputed domain name. Consequently, it is established that the Respondent both registered and is using the disputed domain names in bad faith in accordance with 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 disputed domain names, Emmanuelle Ragot
Sole Panelist
Date: May 25, 2020
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