The Complainant is London Stock Exchange Plc., United Kingdom, represented by Gowling WLG (UK) LLP, United Kingdom.
The Respondent is Timothy Golovin, Golovins Consulting Firm LLC, United States of America (“U.S”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2021, 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 July 13, 2021, 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 July 15, 2021. 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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 23, 2021. 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 London Stock Exchange Plc. It is a public limited company primarily known for operating the Stock Exchange in London for over 200 years. In 2007, the Complainant became part of the London Stock Exchange Group, when it merged with the Milan Stock Exchange, Borsa Italiana. The Complainant is based in the United Kingdom. It is a leading global financial markets infrastructure and data provider. It enables companies and governments from around the world to issue securities such as shares or bonds to raise capital. Such securities are then accessed and traded by thousands of international investors using the Complainant’s platforms under the LONDON STOCK EXCHANGE brand. The Complainant supplies prices, news, and other information to the financial community internationally. The Complainant’s group has significant operations across Europe, the Middle East, Africa, North America, Latin America, and Asia Pacific, and employs 25,000 people globally. The Complainant’s total income for the 2020 financial year was over GBP 490 million with a proportion of that revenue being attributable to the licensing of the Complainant’s intellectual property rights. The Complainant owns a number of registered trademarks for the LONDON STOCK EXCHANGE dating back to 1994, including: (a) European Union trade mark number 001665983 for (fig.) in classes 9, 16, 35, 36, 38 and 42, registered on November 15, 2001; (b) European Union trade mark number 018098225 for LONDON STOCK EXCHANGE (word.) in classes 9, 16, 35, 36, 38 and 42, registered on November 11, 2020. (c) United Kingdom trade mark number UK00002000611 for (fig.) in classes 9, 16, 35, 36, 38 and 42 with effect from August 22, 1997; (d) United Kingdom trade mark number UK00918098225 for LONDON STOCK EXCHANGE (word.) in classes 9, 16, 35, 36, 38 and 42 with effect from January 11, 2020; (e) U.S. trade mark number 2422403 for in classes 16, 35, 36, 38 and 42 with a registration date of January 23, 2001 and a priority date of October 31, 1994. These will be collectively referred to as the “London Stock Exchange Mark”. The disputed domain name The Complainant contends that: (i) The disputed domain name is identical or confusingly similar to the Complainant’s LONDON STOCK EXCHANGE Mark; (ii) The Respondent has no rights or legitimate interests in the disputed domain name; and (iii) The Respondent registered and is using the disputed domain name in bad faith. Specifically, the Complainant contends that it owns the LONDON STOCK EXCHANGE Mark, and that the mark is well known internationally. The Complainant states that, owing to its longevity of trading and essentiality to the world’s financial markets, the Complainant has a substantial reputation in the LONDON STOCK EXCHANGE Mark, which it states has come to denote the financial services originating from the Complainant. It states this is particularly true in the United Kingdom, where the Complainant operates and is known for operating London’s stock exchange. The Complainant states the disputed domain name is confusingly similar, if not identical to the LONDON STOCK EXCHANGE Mark, with the only difference being the addition of the plural “s”. The Complainant contends the public could believe that the disputed domain name is associated with the Complainant, because there is nothing about the addition of “s” which would dispel confusion with the Complainant’s LONDON STOCK EXCHANGE Mark, and its official website “www.londonstockexchange.com”. The Complainant contends that the Respondent lacks rights or legitimate interest in the disputed domain name, and further has registered and is using it in bad faith. It says its LONDON STOCK EXCHANGE Mark would have been well known to the Respondent and contends that given the absence of any connection between the Respondent and the Complainant, there is no justifiable reason why the Respondent has redirected the disputed domain name to the Complainant’s official website other than to deceive internet users looking to access the Complainant’s official website. The Complainant fears the Respondent has the ultimate aim of abusing the trust of deceived Internet users in order to gain an unfair advantage. It states the risks to internet users arising from the deceptive nature of the disputed domain name are made more severe given the nature of the Complainant’s business operating financial products and services. The Complainant further states that when it alerted the Respondent to the fact the disputed domain name may be infringing its trade mark, the response it received from the respondent was “SO WHAT YOU WANA DO ABOUT IT?” and subsequently “WANA BUY THE DOMAINE??? GOLOVINS CONSULTING FIRM LLC THANK”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Complainant has used the LONDON STOCK EXCHANGE name and brand for over 200 years, including internationally for at least 30 years. It owns several registered trademarks, the earliest dating back to 1997. The Panel finds the Complainant has rights in the LONDON STOCK EXCHANGE Mark. The disputed domain name incorporates the Complainant’s LONDON STOCK EXCHANGE Mark in full. The disputed domain name contains the additional letter “s” to make the word “exchange” a plural. The Panel finds that the addition of the letter “s” to the LONDON STOCK EXCHANGE Mark does not prevent the confusing similarity caused by the otherwise identical disputed domain name. The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the LONDON STOCK EXCHANGE Mark or name. The words LONDON STOCK EXCHANGE denote solely the Complainant and its products and services. Further, the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which the Panel notes currently redirects users to the Complainant’s official website. Further, noting that the disputed domain name is nearly identical to the Complainant’s LONDON STOCK EXCHANGE Mark, but for the additional “s” in “exchange”, the construction of the disputed domain name is such to carry a risk of implied affiliation that is reinforced by the redirection of the disputed domain name to the Complainant’s website. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Complainant’s LONDON STOCK EXCHANGE Mark is internationally recognized and denotes the Complainant and its products and services. The Respondent ought to have been aware of the Complainant, its LONDON STOCK EXCHANGE Mark, and its associated goodwill at the time of registration. A simple trademark or search engine search by the Respondent would have revealed the Complainant’s trademark rights in the LONDON STOCK EXCHANGE Mark. (ii) The Panel finds that the disputed domain name’s confusing similarity to the LONDON STOCK EXCHANGE Mark and the fact that it is identical to the Complainant’s Mark but for the addition of the plural “s”, suggests the Respondent was in fact aware of the Complainant and its LONDON STOCK EXCHANGE Mark at the time of registration, and (given the lack of genuine use or rights by the Respondent) that the disputed domain name was registered for the purpose of purporting to be associated with the Complainant. (iii) The Panel relies too on a principle established in previous UDRP decisions that the registration of a domain name incorporating a widely-recognized or well-known trademark by someone who has no connection whatsoever with the trademark is a clear indication of bad faith. See Sodexo v. Shahzan - PrivacyProtect.org,WIPO Case No. D2013-1308. (iv) It is unlikely that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil WIPO Case No. D2000 1409. (v) The nature of the correspondence the Complainant received from the Respondent, stating “SO WHAT YOU WANA DO ABOUT IT?” and “WANA BUY THE DOMAINE???” suggests the Respondent registered the disputed domain name with a view to selling it to the Complainant for a profit. This is evidence of opportunistic bad faith registration. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) The Panel finds that the registration of a domain name that is identical or confusingly similar (particularly domain names comprising a typo) to a famous or widely-known trademark by an unaffiliated entity by itself creates a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0) (ii) The Panel accepts the Respondent’s use of the Disputed Domain Name creates a likelihood of confusion with the LONDON STOCK EXCHANGE Mark and is therefore likely to mislead internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The disputed domain name currently redirects Internet users to the Complainant’s website, but this may not always be the case in future. The risks to Internet users arising from the deceptive nature of the disputed domain name are made all the more serious by the nature of the Complainant’s business which provides financial products and services. (iii) Past panels have previously found that the act of redirecting a domain name to the Complainant’s website constitutes evidence of use in bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant (see section 3.1.4 of WIPO Overview 3.0). (iv) The presence of the disputed domain name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use. See Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564, where the same conclusion was reached. (v) The Panel considers the Respondent is unfairly benefitting from the goodwill and reputation in the Complainant’s trade mark by “typo-squatting” with a similar domain name. (vi) The Respondent has attempted to sell the disputed domain name to the Complainant. (vii) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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 Andrew Brown QC
Sole Panelist
Date: September 6, 2021
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