WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interactive Brokers (U.K.) Limited v. John Diamondopoulos
Case No. D2007-0602
1. The Parties
The Complainant is Interactive Brokers (U.K.) Limited, London, United Kingdom of Great Britain and Northern Ireland (“the Complainant”), represented by Jonathan C. Chait, Switzerland.
The Respondent is John Diamondopoulos, London, United Kingdom of Great Britain and Northern Ireland (“the Respondent”).
2. The Domain Name and Registrar
The disputed domain name, <interactivebrokers.mobi> (“the Domain Name”), is registered with Go Daddy Software (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on April 20, 2007 (email) and April 24, 2007 (hardcopy). On April 24, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On April 25, 2007, the Registrar 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 and technical contact. The Center verified that 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 May 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2007. The Response was filed with the Center on May 17, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 30, 2007. 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.
The original date for submitting the decision was June 13, 2007. For exceptional reasons, the Panel was unable to meet that date and the Center granted an extension until June 15, 2007.
4. Factual Background
The Complainant was incorporated in London on March 28, 2000.
Contrary to what is stated in the Complaint, the Complainant is not the owner of a United Kingdom trademark registration under number 03958476. As is apparent from the exhibit, that number is the Complainant’s company registration number at the Companies Registry.
However, the Complainant’s United States “affiliate” is the proprietor of United States and Community Trademark (“CTM”) registrations of the mark INTERACTIVEBROKERS.COM. The CTM, which was applied for on September 17, 1999 and registered on October 24, 2000, covers goods and services in the investment/financial area.
On September 29, 2006, the Respondent registered the Domain Name.
On December 12, 2006, the Complainant’s United States affiliate wrote to the Respondent drawing the Respondent’s attention to its rights and demanding inter alia transfer of the Domain Name. Not having received a reply to that letter, the Complainant sent the Respondent a “chaser” by email on March 15, 2007 offering the Respondent EUR 100 for inter alia transfer of the Domain Name. The Respondent replied to that email on March 18, 2007 indicating that he had not received the letter and that he would be contacting the Complainant “shortly”.
The Domain Name is parked on a parking page hosted by the Registrar.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. This claim is based upon the existence of the Complainant’s rights and the absence of any licence to the Respondent to use the name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The basis for this claim is reproduced verbatim in section 6 below.
The Respondent does not dispute that the Domain Name is confusingly similar to the Complainant’s registered trademark.
The Respondent denies that he has no rights or legitimate interests in respect of the Domain Name and claims that he is planning to use it for a new business venture in the real estate and/or business brokerage sectors. His plans predate registration of the Domain Name and notification of the Complainant’s objection to his registration of the Domain Name. He says that he was unaware of any objection until receipt of the March 15, 2007 email.
He produces evidence to show that he has been providing consultancy services in relation to projects in Turkey. He says that he has been discussing with one of his clients the setting up of a business brokerage company targeting hotels in Turkey. He contends that “when the dot mobi platform started to take shape last year, [he] immediately saw the potential opportunity and registered the name”.
He does not anticipate any overlap with the business of the Complainant “in terms of service/product, geographical area or platform”.
He denies that the Domain Name was registered and is being used in bad faith. He recites the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and contends that none of them is applicable.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Respondent does not dispute that the Domain Name is confusingly similar to the Complainant’s INTERACTIVEBROKERS.COM registered trademark.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. In so finding, the Panel is giving the Complainant the benefit of the doubt in accepting that the Complainant’s rights stem from the registered rights of its United States affiliate.
C. Rights or Legitimate Interests
The Respondent’s claim to a right or legitimate interest in respect of the Domain Name is based solely upon the Respondent’s plans to set up a business brokerage venture in relation to which he is proposing to use the Domain Name.
The Panel is unable to take any note of those plans because the Respondent has produced no substantive evidence to support them. The evidence certainly supports the existence of various business plans of the kind he describes, but none of them make any mention of the Domain Name.
The Panel is satisfied that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable and can think of no other reason why the Respondent can be said to have rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that while the Complainant’s case under this element may not be particularly strong, the Respondent has not succeeded in a persuasive rebuttal sufficient to establish rights or legitimate interests in respect of the Domain Name.
That said, the Panel recognizes that the Domain Name is a descriptive name and notes that there is no evidence before the Panel as to the scope and extent of the Complainant’s reputation and goodwill in respect of its trademark. That being the case, the Panel would have had no difficulty in coming to a different decision under this head with the benefit of some contemporaneous evidence from the Respondent showing that the Domain Name featured in his plans.
D. Registered and Used in Bad Faith
For those familiar with the Complainant and its business, it may seem obvious that a registrant who registers such a name as the Domain Name in the <.mobi> domain in circumstances where the registrant has failed to produce demonstrable evidence of a bona fide offering (actual or planned) of goods or services under or by reference to the Domain Name, must have registered the Domain Name in bad faith.
That is not an obvious conclusion for someone such as the Panel, who is unfamiliar with the Complainant and its trademark. If such an inference is to be drawn, the Panel has to be suitably informed as to the Complainant’s business, its history and the scope/extent of its reputation and goodwill. The evidence does not need to be extensive. Often (depending upon the circumstances), a print-out from a search engine search will suffice. In this case, the Panel has nothing save for unsupported assertion in the text of the Complaint (e.g., “[the Complainant] is one of the top 15 brokers in the US market and is one of the top trading houses in Europe with regard to volumes traded”). The exhibits to the Complaint comprise a print-out from a Whois database, a page from the UK Companies Registry (no accounts) and pages from the OHIM and United States trademark registries.
The absence of such evidence is particularly significant where the name in question is of a strongly descriptive nature.
However, that is not all. Here follows the complete section of the Complaint purporting to support the contention that the Domain Name was registered and is being used in bad faith:
- Interactive Brokers (U.K.) Limited (“IBUK”) cannot confirm that the domain name was registered or acquired primarily by the Respondent for the purpose of selling, renting, or otherwise transferring the domain name registration, because the Respondent did not yet offer us or [sic] the transfer of the domain name.
- Further, we the Complainant cannot confirm that the domain name was registered in order to prevent IBUK, the owner of the trademark from reflecting the mark in a corresponding domain name.
- On the basis of the facts that the domain name is currently parked free, courtesy of the above named registrar GoDaddy.com, we cannot confirm whether by using that the Respondent intentionally attempted to attract for line location, by creating a likelihood of confusion with IBUK’s mark as to the source, sponsorship, affiliation, or endorsement of IBUK’s web site or location or of a product or service on IBUK’s web site or location.
The Panel acknowledges the candour with which this submission is made, but it is hardly calculated to encourage the Panel to find that the Respondent’s explanation is false and that, contrary to what the Respondent says, the Respondent registered the Domain Name for an abusive purpose.
The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: June 15, 2007