ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Marex Group Plc v. Domain Administrator Case No. D2024-1059 1. The Parties The Complainant is Marex Group Plc, United Kingdom, represented internally. The Respondent is Domain Administrator, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2024. On March 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2024, 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 (REDACTED FOR PRIVACY, PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 2024, 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 the same date. 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 March 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2024.
page 2 The Center appointed Meera Chature Sankhari as the sole panelist in this matter on April 29, 2024. 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 Marex Group Plc (formerly known as Marex Spectron Group Limited) (“The Complainant”) is a company registered in England and Wales offering brokerage, exchange and trading services. The Complainant relies upon the registered trademark for the purposes of this Complaint: MARK Registration No. Class Date of registration Status Jurisdiction MAREX 015025836 16, 35, 36 June 20, 2016 Registered European Union The Respondent in this administrative proceeding is Domain Adminstrator, United States of America. The disputed domain name was registered on September 28, 2023. At the time of filing the Complaint, it resolved to an investment trading platform “Marex Options”; the website featured the Complainant’s trademark. At present, the disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant claims that the Respondent has registered this disputed domain name to create confusing similarity between the Complainant's trademark and the disputed domain name. Given the identical reproduction of the MAREX mark, the public is likely to believe that the disputed domain name comes from the Marex group or is linked to the Complainant. The Complainant submits that the disputed domain name incorporates the MAREX mark in its entirety with the addition of the word “options”, which term is understood to mean financial options, which can be associated with the Complainant’s business. The addition of the word “options” has caused confusion for the Complainant’s clients who have queried whether the disputed domain name is actually owned by the Complainant. The Complainant contends that the disputed domain name is confusingly similar to the trademarked term “Marex” and that services purportedly offered by the Respondent on its website significantly overlap with the services covered by the trademark owned by the Complainant and that the same amounts to infringement of the trademark. The Complainant argues that the Respondent has no rights or legitimate interests concerning the disputed domain name. There is no evidence of the Respondent’s use or of 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. The Complainant has sought to bring the Panel’s attention to several factual, linguistic inconsistencies and false claims. The Complainant further alleges that the Respondent has not been commonly known by the disputed domain name nor with the word “Marex”. The Respondent cannot be described as 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, as the content of the website clearly shows an intention of making commercial gain from the Respondent’s fraudulent offerings of brokerage and trading services in cryptocurrency, stocks, precious metals, etc., which is confusingly similar to the service offered by the Complainant’s business. According to the Complainant, this ought to be viewed as misleadingly diverting consumers and clients of the Complainant to the disputed domain name. The Complainant claims that the Respondent’s website clearly seeks to attract consumers interested in financial
page 3 services, including trading and investment, by the use of pop-up messages showing alleged earnings from customer trading in foreign exchange, all of which illustrate the intention of making commercial gain through use of the disputed domain name. The Complainant argues that the disputed domain name was registered and is being used in bad faith, with an intent to attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site and services being offered on the Respondent’s web site. In fact, the Respondent’s disputed domain name and company name “Marex Options”, mentioned throughout the website could easily be viewed as being affiliated with the Complainant. For the reasons stated above, the Complainant seeks that the disputed domain name be cancelled. B. RespondentThe Respondent did not reply to the Complainant’s contentions. 6. Discussion and FindingsA. Identical or Confusingly SimilarIt is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “options”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that the composition of the disputed domain name incorporating the Complainant’s trademark and the term “options” which can be understood as referring to derivatives that are part of the Complainant’s business offering carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Panels have held that the use of a domain name for illegal activity here, impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used the mark MAREX which is a registered trademark of the Complainant. The mark MAREX is in fact registered, inter alia, in Class 36 and more specifically financial services. The word has no meaning in the English language but the Respondent has used it to register the confusingly similar disputed domain name. As noted above, bad faith is also evident from the fact that the term “options” is used by the Respondent, which is also a term commonly used in the financial sector, to mean a specific form of trading and investment. Use of the Complainant’s registered trademark in conjunction with the word “options”, indicates bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the current non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel concludes that the disputed domain name has been used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 cancelled. /Meera Chature Sankhari/ Meera Chature Sankhari Sole Panelist Date: May 13, 2024
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