WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Börse AG v. Pertshire Marketing, Ltd
Case No. D2006-0786
1. The Parties
The Complainant is Deutsche Börse AG, Frankfurt am Main, Germany, represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany.
The Respondent is Pertshire Marketing, Ltd, Trident Chambers, Tortola, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <deutscheborse.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2006. On June 23, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On June 28, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on June 29, 2006, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 30, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2006.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 3, 2006. 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
The Complainant organizes trading in shares and other securities in Germany. Aside from being a German stock exchange the Complainant is a transaction service provider that affords companies and investors access to global capital markets. Its product and service portfolio covers the process chain from order input to custody of shares and derivatives. Deutsche Börse Group has more than 2,900 employees and has locations in Germany, Luxemburg, Switzerland, Spain, and the United States of America, as well as representative offices in London, Paris, Chicago, New York, Hong Kong, and Dubai.
The Complainant’s Internet website is accessible under the domain name <deutscheboerse.com>.
The Complainant owns the domain names <deutsche-boerse.de>, <deutsche-boerse.net>, <deutsche-boerse.org>, <deutscheboerse.com>, and <deutscheboerse.de>.
The Complainant is the owner of the following German registrations for the trademark DEUTSCHE BÖRSE:
- German Trademark Registration No. 394 04 080 DEUTSCHE BÖRSE (word mark) valid from November 29, 1994 in classes 9, 16, 35, 36 and 42;
- German Trademark Registration No. 396 00 528 DEUTSCHE BÖRSE (& design) valid from January 8, 1996 in classes 9, 16, 35, 36, 41 and 42.
Printouts from the online database of the German Patent and Trademark Office concerning these trademarks were enclosed as attachment 4 to the Complaint.
Translations of the German DEUTSCHE BÖRSE trademarks into the English language were enclosed as attachment 5 to the Complaint.
The Complainant further enjoys international protection of the marks DEUTSCHE BÖRSE (word and word/device) under numbers 702 369 and 721 743, valid from September 29, 1998 and July 16 1999 respectively in classes 9, 16, 35, 36 and 42, enclosed as attachment 6 to the Complaint.
In addition, the Complainant is the owner of Community Trademark Registrations for the trademarks DEUTSCHE BÖRSE (word and word/device) under Nos. 886 481 and 917 161, valid from July 24, 1998 and August 27, 1998 respectively in classes 9, 16, 35, 36 and 42, enclosed as attachment 7 to the Complaint.
The Respondent in this administrative proceeding is Pertshire Marketing, Ltd.
5. Parties’ Contentions
The Complainant is the owner of several domain name registrations containing the words deutsche-boerse and is offering access to its internet website via these domain names. The Complainant owns several trademark registrations covering the territories of Germany and the European Union which marks enjoy protection for the elements DEUTSCHE BÖRSE as word marks and in combination with device elements. These trademarks cover goods and services in classes 9, 16, 35, 36, 41 and 42 and all represent exclusive rights of a date earlier than the date on which the Respondents domain name was created, i.e. on February 1, 2000.
The domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
The <deutscheborse.com> domain name is virtually identical and confusingly similar to the trademarks DEUTSCHE BÖRSE, word marks and combined word and device mark respectively.
From the below trademark registrations it becomes obvious that the Complainant enjoys broad protection for the trademark DEUTSCHE BÖRSE in the field of financial affairs.
- German Trademark Registration No. 394 04 080 DEUTSCHE BÖRSE:
- German Trademark Registration No. 396 00 528 DEUTSCHE BÖRSE:
- International Registration No. 702 369 DEUTSCHE BÖRSE:
- International Registration No. 721 743 DEUTSCHE BÖRSE (& design):
- Communitv Trademark Registration No. 886 481 DEUTSCHE BÖRSE:
- Community Trademark Resistration No. 917 161 DEUTSCHE BÖRSE (& design):
The disputed domain name <deutscheborse.com> is in its second-level part “deutscheborse” confusingly similar to the Complainant’s well-known, above-referenced DEUTSCHE BÖRSE trademarks and the company name Deutsche Borse. The Complainant’s word marks DEUTSCHE BÖRSE and the second-level part “deutscheborse” of the subject domain name only differ in one single letter. For the rest, they are identical. Considering that the German letter “Ö” is an umlaut of the letter “O”, particularly the visual, but also the phonetic difference between “DEUTSCHE BÖRSE” and “deutscheborse” is only marginal. The Respondent simply omitted the two dots over the letter “0.” This does not, however, render the subject domain name <deutscheborse.com> sufficiently different from the Complainant’s trademark DEUTSCHE BÖRSE.
The insignificance of the above-explained minor differences between the Complainant’s trademarks DEUTSCHE BÖRSE and the second-level part “deutscheborse” of the subject domain name also becomes evident if these two terms are entered into the Internet search engine Google. Hits for the Complainant’s mark and company name DEUTSCHE BÖRSE are occasionally even spelled with the letter “O” in stead of its umlaut “Ö,” particularly by non-German-speaking companies that are not acquainted with the German letter “Ö (i. e. “O” with umlaut).
For this reason, the Complainant also uses the expression “deutscheborse” as the second-level part of its aforementioned domain name registrations , which offer access to the official Deutsche Börse website where detailed information on the Complainant’s services can be obtained.
As a result, it must be concluded that the disputed domain name is confusingly similar -if not nearly identical - to the Complainant’s well-known DEUTSCHE BÖRSE trademarks and company name referred to above. The overall impression made by the disputed domain name suggests that it also belongs to the Complainant and consumer confusion will inevitably follow.
The addition of the top-level domain extension “.com” does not dispel the likelihood of confusion as domain name registrants must make use of a top-level domain extension.
Top-level domain extensions are therefore to be ignored when assessing the identity or similarity between domains and trademarks.
The Respondent has no rights or legitimate interests in respect of the domain name <deutscheborse.com>.
The Respondent has no rights or legitimate interests with respect to the domain name <deutscheborse.com>.
Firstly, “deutscheborse” is not a common expression in the German, English, or any other language that would make any sense if used as a domain name, except if used by the Complainant, the company Deutsche Börse AG. “Deutscheborse’ is not a descriptive or generic term that can be freely used by anybody. The Respondent will not be able to explain any legitimate reasons for having registered this term as a domain name.
The mark DEUTSCHE BÖRSE was created by the Complainant who has the exclusive right to use the term/expression as a trademark/company name or as a domain name.
Next, the Respondent is not commonly known by the domain name <deutscheborse.com>.
Further more, the Respondent is not a licensee of the Complainant or otherwise authorized to use the word combination “deutscheborse,” which is - as explained above - confusingly similar to the Complainant’s trademarks and company name DEUTSCHE BÖRSE and also used by the Complainant itself as the second-level part of some of its domain names. Despite the lack of authorization, the Respondent uses this word combination as the second-level part of the subject domain name, which offers access to the Respondent’s “www.deutscheborse.com” website.
Finally, the Respondent is not making a legitimate or non-commercial use of the disputed domain name. As pointed out above, the Respondent offers various kinds of financial and stock exchange-related information, particularly various links to Internet websites, where all kinds of finance-related and stock exchange-related services and information are offered the providers of which are in direct competition with the Complainant. It is obvious that the Complainant does not offer all of the informational services and links for free, but pursues commercial gain. This can be concluded from the link “Anzeige” (advertisement) positioned on the top of the list of links offered by the Respondent on its website.
The Respondent’s portal is evidently a ‘pay-per-click’ website, with which the Respondent clearly pursues commercial gain.
As a result, the Respondent does not have any rights or legitimate interests in the
disputed domain name <deutscheborse.com>.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name <deutscheborse.com> was registered and is being used in bad faith by the Respondent.
According to paragraph 4(b)(iv) of the Policy, evidence of the registration and use of a domain name in bad faith shall in particular be the use of the domain name with the intention of “attracting, for commercial gain, Internet users to the (Registrant’s) website or another online location by creating a likelihood of confusion of the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the (Registrant’s) website.”
By using the subject domain name, the Respondent deliberately intends to attract Internet users to its website. The Respondent tries to directly compete with the Complainant and uses its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services offered on the Respondent’s website within the meaning of the above-mentioned paragraph 4(b)(iv) of the Policy. The Respondent’s website is linked - among others - to financial and stock exchange-related websites of third parties that are in competition with the Complainant. This is extremely unfair and an evident matter of the registration and use of the subject domain name in bad faith.
By combining the terms “deutsche” and “borse” in the second level part of the subject domain name, the Respondent uses a word combination that is nearly identical or at least highly similar to the Complainant’s trademarks and company name, which are all well known to the consumer circles concerned due to the long-lasting and extensive use by the Complainant for financial and stock exchange-related services. The Respondent is certainly acquainted with the circumstances taking into account that the Deutsche Börse AG is the leading company in its field of business in Germany and that it is also successful worldwide. Registration of the subject domain name is certainly no coincidence.
It is evident that the Respondent registered the domain name <deutscheborse.com> in bad faith for the purpose of making illegitimate use of it.
Further, it has to be considered that on the Respondent’s website that can be reached under <deutscheborse.com>, no disclaimer as to the lack of affiliation to the Complainant can be found. Therefore, the Respondent has not even tried to avoid the above-mentioned likelihood of confusion. On the contrary, the Respondent deliberately infringes the Complainant’s own rights.
It is therefore evident that the Respondent registered the disputed domain name in bad faith for the purpose of using it to attract Internet users to a commercial website that makes improper use of a word combination that is nearly identical to the Complainant’s trademarks and company name. It is also evident that the Respondent exploits the Complainant’s good reputation for its own commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
As a result of the foregoing, the Complainant has requested that the domain name <deutscheborse.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for the marks DEUTSCHE BÖRSE in the form of national German trademark registrations and community trademarks for goods and services related to and covering a broad scope of activities which are typically provided by a stock exchange. All these trademarks represent prior rights in relation to the Respondent’s domain name.
The Complainant has provided evidence to the effect that it has been using the deutscheboerse and deutsche-boerse domain names respectively in association with its business by offering information about its services on the websites. The Panel is satisfied that the Complainant has proven that it holds prior rights in the trademarks DEUTSCHE BÖRSE in a wide range of territories including the European Union.
The Panel is of the opinion that the domain name at issue is confusingly similar to both the registered marks DEUTSCHE BÖRSE and the domain names deutscheboerse and deutsche-boerse domain names respectively in which the Complainant has rights.
The trademark protection covers signs which are identical or confusingly similar with the registered marks. Deutsche Börse means “German Stock Exchange” and since the letter “ö” does not exist in the English alphabet, it is commonly transcribed as “oe” or “o” when written in English. Originally domain names could not contain the letter “ö” and therefore the letter “o” or the letters “oe” are often substituted for the letter “ö” in domain names.
Although “deutscheborse” would be considered confusingly similar with DEUTSCHE BÖRSE even without these linguistic facts it deserves to be mentioned that these circumstances cause the disputed domain name and the trademarks to be virtually identical despite the differences between the letter “o” and “ö”.
The “.com” suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is confusingly similar to Complainant’s mark pursuant to Policy § 4(a)(i).
The Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.
Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain name, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled. The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Given the Respondent’s failure to file a Response, the Panel accepts as true all credible allegations of the Complaint. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant.
The circumstances mentioned in paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.
The Respondent is using <deutscheborse.com>,which name is virtually identical with the Complainant’s trading name and trademarks, to refer to its website. Said website appears to be designed to present a list of sponsored links relating to finance, stock market analysis, stock exchange etc all within the scope of protection of the Complainant’s trademarks and business activities. Consequently these services are similar to the services offered by the Complainant and thus the use of the disputed domain names infringes the Complainant’s prior exclusive rights.
This conduct corresponds to the circumstances set out in paragraph 4(b)(iv) of the Policy. In order for this paragraph to be applicable the Respondent must have intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s marks and trading name as to the source, sponsorship, affiliation, or endorsement of its web site.
There is no proof before the Panel that the Respondent has relations with Germany, Frankfurt or the German Stock Exchange or that the Respondent has business activities in these areas, other than the website under the disputed domain name. Neither is the Respondent a resident or citizen of Germany or does he have a commercial place of business in Germany.
The Panel has not noticed any other circumstances that would justify the use of the disputed domain name and the linking to services which are identical or similar to those of the Complainant. According to general trademark principles the commercial use of another persons trademark for similar goods and services constitutes trademark infringement. This is obviously the case here since there seems to be no other reason for the Respondent’s use and registration than those alleged by the Complainant, i.e. the use and registration has been made for commercial gain.
Consequently, the Panel concludes that the contested domain name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites of paragraph 4(i) of the Policy are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <deutscheborse.com> be transferred to the Complainant.
Dated: August 17, 2006