ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GMO Internet Group, Inc. v. INTERNET DATA CO., LIMITED Case No. D2024-3566 1. The Parties The Complainant is GMO Internet Group, Inc., Japan, represented by SafeBrands, France. The Respondent is INTERNET DATA CO., LIMITED, Hong Kong, China. 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 September 3, 2024. On September 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 (PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 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 amended Complaint on September 26, 2024. 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 September 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2024. The Center appointed Douglas Clark as the sole panelist in this matter on October 23, 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.
page 2 4. Factual Background The Complainant is a global Internet company headquartered in Japan and listed on the first section of the Tokyo Stock Exchange. The Complainant provides Internet services around the world with consolidated net sales in FY2023 of JPY 258.6B and over 7,400 employees. The Complainant provides Internet related services to its clients including: Internet infrastructure, online advertising & media, Internet finance, Crypto assets (cryptocurrency). The Complainant builds and operates Internet financial systems such as Internet securities trading and foreign exchange margin trading (FX trading), offers a foreign exchange FX trading service. The Complainant is the owner of numerous trademark registrations across various jurisdictions, including: Trademark Jurisdiction Registration Number Registration Date International Class GMO European Union 005870639 July 30, 2009 9, 35, 36, 38, 42, and 45 International designating a number of countries 1522646 June 28, 2019 9, 11, 16, 24, 25, 28, 32, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 GMO Japan 4940743 March 31, 2006 36 The Complainant is also the owner of numerous domain names composed of the sign “GMO” alone or combined with another element. The Respondent is reportedly based in Hong Kong, China. The Respondent registered the disputed domain name on April 21, 2024. The disputed domain name resolved to a Japanese website that reproduces the Complainant’s GMO trademarks, logo, copyrighted photos, graphic charter, in order to offer a fake GMO bitcoin distribution campaign. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain name to the Complainant and contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: a) The disputed domain name is identical or confusing similar to the Complainant’s trademark or service mark in which the Complainant has rights. b) The Respondent has no rights or legitimate interests in respect of the disputed domain name. c) The disputed domain name was registered and is being used in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown rights in respect of a mark GMO for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. It 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 3.0, section 1.7. The entirety of the mark is reproduced 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. The only difference between the disputed domain name and the Complainant’s trademark is the addition of the term “-coinex” in the disputed domain name. Although the addition of other terms here, “-coinex”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 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. 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. First, the Complainant’s registrations for the trademark GMO across multiple jurisdictions constitute prima facie evidence of its rights to the trademark. Whereas the Respondent is not in any way affiliated with the Complainant. Second, the Respondent is not commonly known by the name “GMO”, is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name, which suggest lack of rights and legitimate interests in the disputed domain name.
page 4 Third, the Respondent’s registration on April 21, 2024, came significantly after the Complainant’s registration of trademark of GMO. Prior to the Respondent’s registration, the Complainant’s trademarks had enjoyed degree of fame and reputation which the Respondent was not authorized to use. In any event, as the Respondent has failed to 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 Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Panels have categorically held that the use of a domain name for illegitimate activity (e.g., impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13. In the premises, 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. 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. As stated above, the Panel notes that the disputed domain name was registered at least a decade after the Complainant’s registration of the trademark GMO and the Complainant had been providing services under this trademark well before the registration of the disputed domain name. The Respondent’s registration of the disputed domain and the contents on the website which the disputed domain directs bearing resemblance to the Complainant’s trademarks and official websites, indicating the Respondent’s knowledge of and familiarity with the Complainant’s brand and business. As such, the Respondent’s use of these trademarks in the disputed domain name cannot be a coincidence. It is clear that by creating the confusion as to the source, sponsorship, affiliation or endorsement with the Complainant’s trademarks, the Respondent is attempting to attract, confuse, invite the Internet users to participate in a fake GMO bitcoin distribution campaign, provide their personal and confidential information on the website to which the disputed domain name directs and use this information to purportedly access the financial products and services provided by the Complainant for its own commercial gain. Such use of the disputed domain name falls into bad faith under paragraph 4(b)(iv) of the Policy. For the above reasons, the Panel finds that the Complainant has established the third 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 be transferred to the Complainant. /Douglas Clark/ Douglas Clark Sole Panelist Date: November 7, 2024
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