ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Euronext N.V. v. Ise Ise Case No. DCO2023-0089 1. The Parties The Complainant is Euronext N.V., Netherlands (Kingdom of the), represented by LegalMatters.com B.V., Netherlands (Kingdom of the). The Respondent is Ise Ise, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name (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 October 17, 2023. On October 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 17, 2023, 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 October 18, 2023, 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 October 24, 2023. 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 October 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2023. The Center appointed Michael D. Cover as the sole panelist in this matter on December 7, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant provides the leading pan-European financial market infrastructure, connecting European economies to global markets. The Complainant operates regulated exchanges in Belgium, France, Ireland, Italy, Netherlands (Kingdom of the), Norway and Portugal. The Complainant has 2,000 listed issuers and approximately EUR 5.7 trillion in market capitalization as of the end of September 2022, with a strong blue chip franchise and a strong and diverse domestic and international client base. The Complainant traces its origins back to the world's first bourses, formed in the Low Countries trade centres: Bruges, Antwerp and Amsterdam in 1285, 1485 and 1602, respectively. The Complainant, in its present form, was founded by the merger of the European Union ("EU") stock exchanges at the turn of the 21st century, following the introduction of the single EU currency and the harmonization of European financial markets. The Complainant operates regulated and transparent equity and derivatives markets, one of Europe's leading electronic fixed-income trading markets and is a large centre for debt and funds listings throughout the world. The Complainant's total product offering includes equities, foreign exchange, exchange-traded funds, warrants and certificates, bonds, derivatives, commodities and indices. The group of which the Complainant is part provides a multi-asset clearing house through Euronext Clearing and custody and settlement services through Euronext Securities central securities depositories in Denmark, Italy, Norway and Portugal. The Complainant also deploys its expertise in running markets by providing technology and managed services to third parties. The Complainant operates a website at "www.euronext.com". The Complainant is the proprietor of various registered trademarks as set out in Annexes 4 to 8 to the Complaint, including the following: - European Union No 013343629 EURONEXT in Classes 9, 35, 36, 38, 41 and 42, filed October 8, 2014, registered March 3, 2015; - United Kingdom No 00913343629 EURONEXT in Classes 9, 35, 36, 38, 41 and 42, filed October 8, 2014, registered March 3, 2015; - European Union No 018070221 EURONEXT in Classes 9, 35, 38, 41 and 42, filed May 21, 2019, registered February 4, 2020; - United Kingdom No 00918070221 EURONEXT in Classes 9, 35, 38, 41 and 42, filed May 21, 2019, registered February 4, 2020; - International Registration No 1506088 EURONEXT in Classes 9, 35, 38, 41 and 42, designating the United Kingdom, Norway, the Russian Federation, Singapore and the United States of America filed and registered May 22, 2019. The Respondent is Ise Ise of Hong Kong. The Disputed Domain Name was registered on October 9, 2023. The Disputed Domain Name resolves to a website at "www.euronextnl.com", which features the Complainant's trademark EURONEXT and the Complainant's device trademark (logo), as set out in Annex 9 to the Complainant. page 3 5. Parties' Contentions A. Complainant Identical or confusingly similar The Complainant submits that the Disputed Domain Name is identical or at least visually and phonetically similar to the Complainant's earlier trademark EURONEXT. The Complainant continues that the distinctive element of the Disputed Domain Name is the element "Euronext", which is identical to the Complainant's earlier trademark registrations. The Complainant then states that the element "nl" is merely the abbreviation for Netherlands (Kingdom of the) and that one of the Complainant's main locations is Amsterdam, Netherlands (Kingdom of the). The Complainant submits that, as the element "nl" is just merely an abbreviation, it is not distinctive and should not be taken in consideration when comparing the Disputed Domain Name with the Complainant's earlier rights. The Complainant continues that, even if it is considered that the element "nl" has distinctive character, that the distinctiveness should not only be very limited but it also enhances the risk of confusion with the Complainant's earlier rights, as "nl" refers to Netherlands (Kingdom of the), one of the Complainant's locations. With regard to the element ".co", the Complainant submits that this is only the top level domain extension of the Disputed Domain Name and that this element is descriptive and non-distinctive and therefore should not be taken into consideration, when comparing the Disputed Domain Name with the Complainant's earlier trademark. The Complainant continues that, even if it is considered that the element ".co" does have some distinctive character, the overall impression between the Disputed Domain Name and the earlier trademark EURONEXT of the Complainant is that the Disputed Domain Name is nearly identical or at least highly similar. The Complainant concludes that the Disputed Domain Name is identical or at least highly confusingly similar to the Complainant's earlier trademark registrations for the mark EURONEXT, which will lead to confusion amongst Internet users. No rights or legitimate interests The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Respondent is not commonly known by the Disputed Domain Name and has not been authorized to use the Complainant's EURONEXT trademark. The Complainant states that the Respondent is not using the Disputed Domain Name with a bona fide intent and is not making legitimate non-commercial use of the Disputed Domain Name. Registered and Used in Bad Faith The Complainant submits that the Respondent has registered the Disputed Domain Name in bad faith. The Complainant notes that it has already set out that it is Europe's largest bourse/ stock exchange and wellknown in the financial markets and that the Respondent could and should have been aware of this at the time of registering the Disputed Domain Name on October 9, 2023. The Complainant notes that the Respondent is using the Complainant's word mark EURONEXT on the website under the Disputed Domain Name, as set out in Annex 9 to the Complainant. The Complainant notes that the website under the Disputed Domain Name also features the PULSE logo, which is registered as a trademark by the Complainant in the European Union under No 010891695 and in the United Kingdom under No 00910891695. The Complainant submits that the use of the Disputed Domain Name in combination with the registered word mark and registered device mark means that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship, affiliation or endorsement of the Respondent's website. page 4 The Complainant submits that the Respondent has clearly registered the Disputed Domain Name in bad faith and is using the Disputed Domain Name in bad faith, pretending to be the Complainant or a subsidiary of the Complainant or at least related to the Complainant, for the sole purpose to attract Internet users for commercial gain by intentionally infringing the Complainant's exclusive rights. Remedy requested by the Complainant The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of the Complainant's trademark EURONEXT for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the Complainant's mark EURONEXT is reproduced within the Disputed Domain name. Accordingly, the Disputed Domain Name is confusingly similar to that mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here "nl" 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 addition of the country code Top-Level Domain ("ccTLD") ".co" does not prevent a finding of confusing similarity, as the addition of that ccTLD is a technical requirement of registration. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds 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 disputed 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 page 5 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. 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 Respondent has not demonstrated rights or legitimate interests in the Disputed Domain Name by showing, before any notice to the Respondent of the dispute, that the Respondent has made use or 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 nor has the Respondent been commonly known by the Disputed Domain Name nor has the Respondent made 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 at issue. Based on the available record, 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. It is a reasonable inference that the Respondent knew of the Complainant's company, well known trademark and reputation at the time of the registration of the Disputed Domain Name, particularly noting the Respondent's use of the Complainant's trademarks on the website of the Disputed Domain Name and that the Disputed Domain Name was hence registered in bad faith. With regard to the use of the Disputed Domain Name, this has taken the form of the Disputed Domain Name resolving to a website that features the Complainant's trademarks. This is contrary to paragraph 4(b)(iv) of the Policy, which states that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or of a product or service on the Respondent's website. Based on the available record, 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. /Michael D. Cover/ Michael D. Cover Sole Panelist Date: December 21, 2023
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