WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IG Index PLC v Index Trade
Case No. D2000-1124
1. The Parties
The Complainant is IG Index PLC, a wholly owned subsidiary of IG Group Plc who are incorporated in England and Wales and whose registered office is in London, England.
The Respondent is Index Trade whose principal place of business is in Antigua, West Indies.
2. The Domain Name and Registrar
The domain names the subject of this dispute are igindex.com and igindex.net ("the Domain Names), which were first registered in July 1988.
The registrar with which the domain names are registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon VA 20170, USA ("the Registrar").
3. Procedural History
On August 25, 2000, a Complaint by IG Index PLC was received by email.
On August 30, 2000, the Complaint was received by WIPO in hardcopy.
On August 30, 2000, a formal requirements compliance checklist was completed.
On August 31, 2000, the Registrar responded to a request for Registrar verification of August 30, 2000.
On September 4, 2000, a formal notification of Complaint and commencement of administrative proceeding was sent to the Complainant.
On September 21, 2000, a Response from Index Trade was received by email.
On September 28, 2000, a notification of appointment of Adminstrative Panel and projected decision date was sent to the Complainant and Respondent, together with transmission of case file letters.
4. Factual Background
IG Index was founded in 1974 and has been grading as IG Index since 1975. In 1982, IG Index was the first company in the UK to offer clients the opportunity to bet on the FTSE 100 and Wall Street Indices. IG Index was the first spread betting firm and the first firm in the UK to offer bets on quoted shares and the first company to offer controlled risk spread bets. IG Index is the world’s leading online and offline spread betting firm by both profitability and turnover.
The Complainant has invested heavily in the promotion of its name, IG Index. The IG Index name has become synonymous with the Complainant and its business. The Complainant operates a web site called IG Index branded with the IG Index name which can be viewed from URL’s "www.igindex.co.uk" and is currently the only UK spread betting company to offer an Internet dealing service.
Whilst the Complainant does not own a registered trade mark in respect of the name IG Index, it owns the unregistered trade mark rights in the IG Index name.
The Respondent operates an online and offline spread betting service and in relation to its online service, the Respondent operates a web site which can be viewed through URL www.indextrade.com which was launched in September 1999.
The Respondent is the owner of the domain names indextrade.net and indextrade.co.uk. The Respondent has also registered the domain names igindex.com and igindex.net in July 1998.
The Respondent has no rights or legitimate interest in the domain names igindex.com and igindex.net. The domain names are identical in all material respects with the Complainant’s name, are not generic and can only denote the services offered by the Complainant. The Respondent is a competitor of the Complainant and the only inference which can be drawn from the Respondent’s registration of these domain names is that they have been registered primarily for the purpose of disrupting the Complainant’s business.
The domain names registered by the Respondent are identical to the Complainant’s trade mark and domain names. This registration and their appearance on the WHOIS search creates the likelihood of confusion that there is some affiliation, connection or endorsement with the Respondent’s registration, when in fact, none such exist.
The Respondent is not a licensee of the Complainant and has not obtained any authorisation to use the Complainant’s trade mark and/or domain names.
The trade mark in which the Complainant claims to have rights is merely a ‘common law’ claim to trade mark, valid in the UK. While the Complainant can apply the ".co.uk" designation to its site, it has no grounds for global ‘.com’ rights to the name. Considering that IG Index is only specifically authorised by the UK regulatory authorities to conduct investment business in the UK, it contravenes common sense for them to claim such a ‘common law’ trade mark globally. In particularly, many of IG Index’s activities would contravene US securities trading regulations.
Despite the Complainant’s claim that the Respondent has no legitimate interest with respect of the domain names, the Respondent has secured many names which have to do with its activities, in particular Index Trading. When Index Trade registered the name, it had every intention of developing a content based site (still in development) with respect to Internet Global-Indexes (IGIndex).
The Respondent asserts that the Complainant has been trading since the 1970’s and had every opportunity to view itself as a ‘global’ financial institution and claim the .com designation. It did not do so, and believes the Complainant had no intent to expand its business outside the UK. The Respondent has a mandate to develop e-commerce and content opportunities in the Index Trading space which it fully intends to realise via a series of globally targeted info-portals in this space.
The domain names were registered for the development of a series of sites with regard to Internet Global Indexes and the Respondent asserts it is highly misleading to claim that the names are being used in bad faith. There is currently no site in operation on igindex.com or igindex.net. Therefore, it is factually evident that there can be no chance of confusion with the offerings of IndexTrade.com. It is misleading to claim that the Respondent is a competitor of the Complainant. The only similarity between the two companies is that they offer some form of financial trading.
6. Discussion and Findings
I now consider whether the Complainant has made out the requirements of paragraph 4(a) of the Policy. I will deal with each of these requirements separately. For convenience, I will deal with the domain names "igindex.com" and "igindex.net" together, unless separately identified.
1. The domain names are identical or confusingly similar to a trade mark in which the Complainant has rights.
Focusing on the domain names, minus the suffixes ".com" and ".net" it is apparent that igindex is confusingly similar to IG Index.
The Respondent does not seem to dispute that the Complainant trades under and is known by the name IG Index.
While the first limb of the test seems to have been met, the second limb needs to be taken into account. This refers to "a trade mark in which the Complainant has rights." It is here that the parties are in disagreement. The Complainant does not indicate where the name IG Index derived from. It does however, allege that it owns the "unregistered trade mark rights" in the IG Index name. What the Complainant does not identify is where these alleged right subsist. The question arises whether the alleged rights exist in the Complainant’s home country or the United Kingdom, throughout Europe or further afield.
The position, on the papers, is less than complete. While the Complainant states that it launched its on-line dealing in spread betting in 1998, it does not state when in 1998. As the disputed domain names were registered in July 1998, this date may be relevant.
Further, the Complainant asserts that in the financial year to May 31, 2000, it had an advertising spend of approximately ₤1,000,000 which does not include mailings, etc. While it may not be the sole determinant, it would have been helpful to have indicated what the advertising spend was in the period immediately prior to July 1998. IG Index name has become synonymous with the Complainant and its business" is fair and well. However, it begs the question of where and since when this has been the case.
As to the Complainant’s reply to the Respondent’s Response, I am prepared, in my discretion, to take this into account. That is, even though the Rules and Policy do not foresee or provide for such further reply.
In paragraph 2 of the reply, the Complainant alleges that it has clients all over the world, including in the US. However, this broad statement suffers from the same deficiencies identified above. The Respondent puts these matters in issue. In paragraph 1 of its Response, it states that the alleged trade mark rights are merely valid in the UK and not globally. There is much discussion between the parties about the legality or otherwise of making various offerings outside the United Kingdom. I do not need to decide this issue for the purposes of this decision.
In the end, I am faced with the dilemma of asking whether the Complainant has made out its case on this point. I feel the record is incomplete and this makes it difficult for the Panelist to form a fully informed view. Notwithstanding this, and for reasons which become apparent below, I am prepared to give the Complainant the benefit of the doubt and find that this head has been met.
2. The Respondent has no rights or legitimate interests in respect of the domain names.
Even though the Complainant has established its claim in respect of (1) above, the Panelist need to be satisfied that the Respondent has no rights or legitimate interests in respect of the domain names. While it is not apparent as to why the Complainant chose the name IG Index, the Respondent, which is also involved in index trading, has indicated that it intends developing a content-based site with respect to Internet and global indexes.
While the Complainant labels this explanation as "obviously ridiculous" for a index trader involved in the Internet, this explanation is not, on its face, entirely implausible. Given the nature of the proceeding, the offering of indexed trading seems to be a plausible explanation, which the Panelist must give weight to. Such determination is allied to the doubts the Panelist has about the Complainant’s establishment of its rights across an international index trading market.
3. The domain names were registered and are being used in bad faith.
For the same reasons identified above, it is difficult to hold, with any certainty, that the domain names were registered in July 1998, in bad faith. Indeed, there is little by way of specific assertion that as at that date an index trader in the America’s or West Indies would have been acting in bad faith by registering disputed domain names.
Likewise, there is no evidence that the Respondent is using the domain names in bad faith. The Complainant notes in paragraph 6 of its reply that the Respondent is careful to say, "there is currently no site in operation on igindex.com or igindex.net". The Complainant notes, however, that the Respondent does not confirm whether or not there ever has been. It goes on to say it believes there has been such a site. If the Complainant believed so, it presumably could and should have placed such evidence before the Panel.
Accordingly, the Panelist holds that this ground has not been made out.
In conclusion, the Panelist is of the view that as the above test, which is cumulative, has not been made out and as the onus lies on the Complainant, the relief is denied.
Clive L. Ellliott
Dated: October 16, 2000