WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

IG Index Plc v. Fruit Group Inc.

Case No. D2000-1413

 

1. The Parties

The Complainant in this administrative proceeding is IG Index Plc, a wholly owned subsidiary of IG Group Plc, which is incorporated in England and Wales under the Companies Act 1985 (as amended) with registered no. 01190902 and whose registered office is Friars House, 157-168 Blackfriars Road, London SE1 8EZ, UK.

Respondent in this administrative proceeding is Fruit Group Inc., a company situated in the Bahamas, c/o Cassar & Co., Norfolk House, Annex 11, Market & F Nassau, Bahamas.

 

2. The Domain Name and Registrar

The Domain Name is <igindex.org>.

The registrar with which the domain name is registered is BulkRegister.com, Inc., 7 East Redwood Street, Third Floor, Baltimore, MD 21202,USA.

 

3. Procedural History

(a) Amended complaint filed on January 8, 2001 (original filed on

October 18, 2000).

(b) The Complainant elected to have the dispute decided by a single-member Administrative Panel.

(c) In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the location of the principal office of the concerned registrar is in respect of the domain name <igindex.org>.

(d) There are no other legal proceedings that have been commenced or terminated in connection with or relating to the domain name that is the subject of the Complaint. (Rules, para. 3(b)(xi))

(e) As required by the Rules and Supplemental Rules, payment in the amount of USD 1,500 has been sent by bank transfer on October 17, 2000.

(f) The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the disputeís resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.

(g) Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent on January 15, 2001. Although no response has been received from the Respondent, this Panel concludes that proper notification has been conducted in accordance with paragraph 2(a) of the Rules.

(h) The single panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on March 4, 2001 and was duly appointed in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by March 20, 2001.

 

4. Factual Background

IG Index, founded in 1974, has traded as IG Index since 1975. "IG" originally stood for "Investors Gold" (this was because IG Index catered to people who wanted to speculate on the gold price but for whom it was difficult to do so because of exchange controls). "Index" refers to the underlying index upon whose movement the customer speculates (the original index being the price of gold). The business is a spread betting operation that allows its clients to bet on a large range of financial markets, including stock indices, shares, currencies and commodities, and sporting events. IG Index claims to be the world's leading online and offline spread betting firm by both profitability and turnover. It also has foreign exchange trading and Equity Contracts for Differences (a means of trading shares on margin) businesses. For the past twenty-five years "IG Index" is said by the Complainant to have served as an indication of its business, worldwide. This includes Europe, Australia, South Africa and the United States of America, Bermuda, Canada, China, Egypt, Hong Kong, Israel, Kazakhstan, Kuwait, Japan, Malaysia, New Zealand, Saudi Arabia, Singapore, and the UAE.

As evidence of its investment in the promotion of its name, IG Index, it has spent approximately £1m in the financial year to May 31, 2000, and the Complainant's advertising spending was approximately £900,000 in the previous year, not including mailings, promotion and other forms of marketing.

IG Index launched its online dealing service for spread betting in 1998, being the first UK spread betting company to offer an internet dealing service. It operates a web site called IG Index branded with the IG Index name which can be viewed from the URL's <www.igindex.co.uk> and< www.ig-index.com>.

The Respondent registered the domain name <igindex.org> in April 2000. The domain name has been dormant for 10 months without any indication that the Respondent intends to use it by setting up a web site under the domain name or otherwise.

On July 14, 2000, a letter, written on behalf of the Complainant, was sent to the Respondent in which the factual information referred to above was set out. Further, it alleged that the Respondentís site was causing confusion and damage to the Complainant. It further asserted an entitlement to bring court proceedings for passing off, and requiring handing over of the Domain Name. The letter also advised the Respondent that the Complainant would be prepared to agree not to proceed in this manner if certain undertakings regarding the Respondentís activity along with transfer of the Domain Name in question took place by the close of business on Tuesday, July 24, 2000. No response to this communication has been received by the Complainant.

The Complainant conducted a WHOIS search which revealed 44 other domain names owned by the Respondent. These included <ministryofdefence.com>, <themod.com>, <themod.net> and <davidlloyd.net>.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the domain name <igindex.org> is identical to and confusingly similar to the IG Index name which has become synonymous with the Complainant and its business, and in which it has established a very substantial reputation and goodwill, and that it has the common law trade mark rights asserted in this name, pursuant to the Policy, paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name <igindex.org> pursuant to the Policy, paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name <igindex.org> in bad faith in violation of the Policy, paragraph 4(a)(iii).

B. Respondent

Respondent did not reply to the Complaint or otherwise participate in the proceedings.

C. No Other Submissions

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties (taking note of the Respondentís default in responding to the Complaint).

 

6. Discussion and Findings

A. The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and BulkRegister.com, Inc. which incorporates, by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") by way of BulkRegisterís domain name dispute policy in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abusive domain name registration (Policy, paragraph 4(a)). Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).

The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply or participate in any other fashion is not due to any omission by WIPO (see Procedural History, supra).

B. In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of the three elements of paragraph 4(a) are present:

i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The uncontradicted evidence of the Complainant satisfies the Panel that it has a common law entitlement to an unregistered trade mark in the name IG Index, in respect of which the domain name registered by the Respondent is identical or confusing.

It has been held that a Complainant may rely on rights in unregistered marks, where it has common law rights. See e.g., Vertical Computer Systems Inc. v. Registrant of "Pointmail.com" (D2001-0006); CellControl Biomedical Laboratories GmbH v. Mike Flowers (D2000-1257); Jeanette Winterson v. Mark Hogarth, (D2000-0235); Julia Fiona Roberts v. Russell Boyd (D2000-0210). The Panel finds that the Complainant has satisfied the requirement that it have a trade mark right in the mark IG Index, and that the domain name, igindex.org, is identical and confusing pursuant to paragraph 4(a)(i) of the Policy.

ii) Respondent has rights or legitimate interests in respect of the domain name.

The uncontradicted evidence of the Complainant shows that by the time of the registration of the domain name "igindex.org" by the Respondent in April 2000, the Complainant had a common law entitlement to an unregistered trade mark in the name IG Index, in respect of which the domain name registered by the Respondent is identical or confusing. The Respondent is not a licensee of the Complainant and has not obtained any authorisation to use the Complainantís trade mark and/or domain names, and/or to apply for any domain names incorporating any of the Complaintís trade marks or names. Nor does the Respondent appear to have ever used the name "igindex" or any similar name in the promotion of any goods or services. Further, there is no evidence that the Respondent has been commonly known by the domain name in question. See e.g.,

America Online Inc. v. Anson Chan (D2001-0004). Therefore, this Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been proven.

iii) The domain name has been registered and is being used in bad faith.

While it may rarely if ever be possible to exclude some plausible manner by which a Respondent could legitimately use a domain name, that does not appear to be a reasonable inference in this case. In any event, the failure by the Respondent to file a response to the complaint permits an inference that the Complainantís allegations are true and that the Respondent knows its website is misleading. See e.g., Hewlett-Packard Co. v. Full System (FA 0094637); David G. Cook v. This Domain is For Sale (FA 0094957); Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge (FA 0094925); America Online Inc. v. Anson Chan (D2001-0004); Reuters Limited v. Global Net 2000 Inc. (D2000-0441).

Further evidence of the Respondentís bad faith and lack of any legitimate interest in respect of the domain name <igindex.org> is found in its lack of any response to the allegations made in the Complainantís letter of July 14, 2000 that the Respondentís domain name will mislead others to the point of causing confusion and damage to the Complainant and amount to a passing off cause of action.

Similarly, the apparent stockpiling of 44 other diverse domain names by the Respondent brings into question its bona fides in this regard.

I find that the Respondent knew of the Complainantís mark before it registered the disputed domain name, and is using the domain name in bad faith.

 

7. Decision

For all of the foregoing reasons, the Panel finds that the Complainant has satisfied the applicable standard of proof, which must be met by the Complainant, which is a preponderance of the evidence. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ĎMadonna.comí (D2000-0847), and America Online Inc. v. Anson Chan (D2001-0004).

The ruling of this Panel is that the registration of the domain name <igindex.org> be transferred to the Complainant.

 


 

Cecil O.D. Branson, Q.C.
Sole Panelist

Dated: March 17, 2001