WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tullett Prebon Group Limited v. Texas International Property Associates

Case No. D2007-0828

 

1. The Parties

The Complainant is Tullett Prebon Group Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, Texas, United States of America.

 

2. The Disputed Domain Name and Registrar

The disputed domain name <tulletprebon.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 6, 2007 and by hard copy on June 13, 2007. On June 8, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On June 11, 2007 Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2007. The Response was filed with the Center on July 26, 2007.

The Center appointed Alistair Payne as the sole panelist in this matter on August 17, 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.

 

4. Factual Background

The Complainant is the holding company of a large inter-dealer broker trading as TULLETT PREBON. It acts as an intermediary in the wholesale financial markets. The Complainant also operates an information sales business named TULLETT PREBON INFORMATION. The Complainant has offices in countries across the world including London, New York, Hong Kong, Tokyo, Paris, Sydney and Toronto.

The Complainant’s group of companies registered the domain names <tullettprebon.com> and <tullett-prebon.com> on March 10, 2005. The Group also operates the domain names: <tullettprebon.co.jp>, <tullett-prebon.co.jp>, <tullettprebon.kr>, <tullett-prebon.kr>, <tullettprebon.co.kr>, <tullett-prebon.co.kr>, <tullettprebon.com.au>, <tullett-prebon.com.au>, <tullettprebon.com.cn>, <tullett-prebon.com.cn>, <tullettprebon.com.hk>, <tullett-prebon.com.hk>, <tullettprebon.com.ph> and <tullettprebon.eu>.

The Complainant was previously known as COLLINS STEWART TULLETT until December 19, 2006. The Company PREBON was acquired by COLLINS STEWART TULLETT on October 13, 2004.

On April 5, 2005, the Complainant’s UK company TULLETT LIBERTY LIMITED was renamed TULLETT PREBON LIMITED.

The Respondent registered the Disputed Domain Name on February 4, 2006.

 

5. Parties' Contentions

A. Complainant

The Complainant contends that after it acquired the company PREBON in October, 2004 it began to rebrand its inter-dealer broker services under the name TULLETT PREBON. The Complainant provides as evidence an article from Risk Magazine published in September 2005, which refers to the Complainant as TULLETT PREBON and awards them first place in a survey of brokers as voted by the public. In addition to this, the Complainant also includes an article published in FX-Week in November 2005, which states that the Complainant won awards as best broker in two categories under the name TULLETT PREBON. The Complainant further claims that the public came to associate the trade mark TULLETT PREBON with its inter-dealer broker services in 2005. Therefore the Complainant believes that the name TULLETT PREBON became a common law trade mark before it was registered as the Disputed Domain Name by the Respondent.

The Complainant has also used the name TULLETT PREBON INFORMATION since July 2005 to provide independent real-time price information from the wholesale inter-dealer brokered financial and commodity markets.

The Complainant maintains that the Disputed Domain Name is confusingly similar to the Complainant’s common law trade mark TULLETT PREBON as the exclusion of the third “t” in TULLETT and the addition of the generic top level domain “.com” do not render the Dispute Domain Name unique. In addition to this, the Complainant states that the gap between TULLETT and PREBON does not appear in the Disputed Domain Name as spaces are not permitted within a domain name.

The Complainant maintains that the Disputed Domain Name resolves to a website where hyperlinks to various third party websites are displayed. The Complainant believes that the Respondent receives, or intends to receive, revenue from this. The links are for various services which include financial services such as investment management services. The Complainant contends that this will cause direct confusion in the eyes of Internet users with the Complainant’s own financial services and does not constitute either a legitimate non-commercial or fair use of the Disputed Domain Name.

The Complainant maintains that the Respondent is not commonly known by the Disputed Domain Name and has no permission to use TULLETT PREBON by license or otherwise. The Complainant further maintains that the Respondent could not have been unaware of its trade mark before it registered the Disputed Domain Name as joining the words TULLETT and PREBON together with a slight variation by mere coincidence was highly unlikely. The Complainant provides the results of a search of the Internet search engine Google for TULLET to prove that spelling TULLETT without the third “t” is a common misspelling of the word. The results for TULLET display over 100 entries for the Complainant’s trade mark and services.

The Complainant claims that the Respondent has registered and is using the Disputed Domain Name in bad faith to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. As stated above, the Complainant is of the opinion that the Respondent is making a commercial gain from the use of links contained on the website contained at the Disputed Domain Name. The Complainant maintains that images from the Respondent’s website are hosted by “wwwhitfarm.com”, a well known provider of domain name services offering pay per click revenue to users.

Finally, the Complainant contends that the Respondent has also been a respondent in 14 previous domain name disputes which resulted in 12 transfers of the domain names at issue to the respective complainants. The Complainant asserts that this demonstrates that the Respondent has engaged in a pattern of behavior of registering third parties’ trade marks as domain names for commercial gain. The Complainant maintains that this provides further evidence of bad faith.

B. Respondent

The Respondent argues that at the time of registration of the Disputed Domain Name it had no constructive knowledge of the Complainant or the Complainant’s use of the TULLETT PREBON name.

In this regard the Respondent highlights the Complainant’s admission that its group was known as COLLINS STEWART TULLETT until December 19, 2006. As the Respondent registered the Disputed Domain Name on February 4, 2006, it believes that this proves that the registration of the Disputed Domain Name could not have been in bad faith. In support of this, the Respondent cites the WIPO decision of PlasmaNet, Inc. v. John Zuccarini, WIPO Case No. D2002-1101, where the panel found that a party who establishes trade mark rights in a name subsequent to a domain name holder’s registration of the domain name at issue could not “retroactively unseat” the domain name holder.

 

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii. the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

In this case it is clear that the Disputed Domain Name is confusingly similar to the TULLETT PREBON name. The exclusion of the final “t” in TULLETT is characteristic of classic typo-squatting cases e.g. Swarovski A.G. v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148 and the Complainant has shown by the use of the Internet search engine Google that the exclusion of the final “t” in TULLETT is a popular misspelling which will still direct an Internet user to the Complainant’s services.

At the time the Respondent registered the Disputed Domain Name in February 2006, the Complainant did not have any registered trade mark rights in this name. However, the Panel is satisfied that the Complainant had common law trade mark rights in TULLETT PREBON.

The Panel accepts the evidence of the Complainant that it began to use the TULLETT PREBON name after October 2004, as the magazine articles of September and November 2005, provided by the Complainant both refer to it as TULLETT PREBON. In addition to this, the domain names <tullettprebon.com> and <tullett-prebon.com> were registered on March 10, 2005, and the UK company TULLETT LIBERTY LIMITED became TULLETT PREBON LIMITED in April 2005. Also, the company TULLETT PREBON INFORMATION has been in operation since July, 2005.

The Panel also notes that the company has a major worldwide presence with offices in 12 countries across the globe and joint ventures in a further 6. It reported revenue of 649.4 million for 2005 while trading under the name TULLETT PREBON. In light of this and the above, the Panel therefore finds that the Complainant had established a presence in the inter-dealer broker industry as TULLETT PREBON before February 2006 and had acquired common law trade mark rights in the name TULLETT PREBON.

For completeness, the Panel notes that the case of PlasmaNet, Inc. cited by the Respondent above contained no circumstances to show that the Complainant had acquired common law or trade marks rights in the words in question, FREE LOTTO, before the respondent there registered the domain name at issue and thus is not relevant to this case.

Accordingly, the Panel finds that the Complainant does have common law trade mark rights in the name or mark TULLETT PREBON which were acquired before the Respondent registered the Disputed Domain Name, and therefore fulfills paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name as required under paragraph 4(a)(ii) of the Policy.

The Panel notes that the Respondent has provided no evidence to support a finding that it has been commonly known as the Dispute Domain Name, or that it is using the Disputed Domain Name for a bone fide offering of goods and services.

The Disputed Domain Name resolves to a website where links are provided to third party services. These services include financial services similar to those being offered by the Complainant. It is highly likely that these links are generating a profit for the Respondent and this cannot be said to constitute a legitimate non-commercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant fulfills paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy it shall be deemed to be evidence of registration and use in bad faith if the use of a domain name intentionally attempts to attract, for commercial gain, Internet users to a site by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website.

The Panel is of the view that the mark TULLETT PREBON is very distinctive and that it would be highly unlikely for another entity to chose that name or a slight variation thereof without the Complainant in mind. Therefore, the Panel finds that the Respondent was more than likely aware of the Complainant when it registered the Disputed Domain Name and thus that the registration was carried out in bad faith.

As stated above, the Disputed Domain Name resolves to a website that contains links to other third party services including those similar to the Complainant’s services. The Panel is satisfied that the use of a slight variation of the name TULLETT PREBON in the Disputed Domain Name is intended to attract Internet users to the Respondent’s website to generate commercial gain when users click through onto those links.

The Panel also notes the Complainant’s assertion that there is evidence that the Respondent has engaged in a pattern of this kind of behavior as it has been the respondent in 12 other previous disputes in relation to domain names that were found to be identical or confusingly similar to other well known corporations e.g. American Airlines, Inc. v. Texas International Property Associates, NAF No. 0702000914854, April 10, 2007. The Panel accepts this as further evidence of bad faith on the part of the Respondent.

Accordingly, the Panel finds that the Respondent has registered and is using the Disputed Domain Names in bad faith and thus that the Complainant fulfills paragraph 4 (a)(iii) of the Policy.

 

7. Decision

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 <tulletprebon.com> be transferred to the Complainant.


Alistair Payne
Sole Panelist

Dated: August 31, 2007