The Complainants are BGC Partners, Inc., New York, United States of America; and BGC Partners, L.P., New York, United States of America; represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Wang Qingsong, Nanjing, Jiangsu, the People's Republic of China.
The disputed domain name <fx-bgc.com> is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 23, 2009, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 26, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. On March 26, 2009, the Center transmitted by email to the parties a communication in Chinese and in English concerning the language of proceeding. On March 31, 2009, the Complainants submitted a request that English be the language of proceeding and an amended Complaint adding BGC Partners, L.P. to the Complainants. The Respondent did not comment on the language of proceeding by the due date.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on May 13, 2009. 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 Complainants are BCG Partners, Inc. and affiliated BCG Partners, L.P. The Complainants provide financial trading services and offer products and services for use in foreign exchange. The Complainants have used the BGC mark in commerce since 2004. The Complainants are the registrants of the BGC mark in US and UK and have filed for registration of the mark in China.
The disputed domain name was first created on August 30, 2006.
The Complainants contended that the disputed domain name was identical and/or confusingly similar to Complainants' well-known BGC mark, as it fully incorporated the mark BGC exactly and in its entirety.
The Complainants contended that the Respondent lacked any legitimate interest in the disputed domain name.
The Complainants contended that the Respondent registered and was using the domain name in bad faith.
The Complainants requested that the disputed domain name be transferred to the Complainants.
The Respondent did not reply to the Complainants' contentions.
The Complainants requested that the language of the proceeding be English, different from the language of the Registration Agreement, as confirmed by the Registrar. The Respondent did not make any submission, nor did it contend the Complainants' assertion.
The Rules, paragraph 11(a), set out that the language of the Registration Agreement is the language of proceeding by default, except in the case of an agreement otherwise by the parties. Further, the panel can determine language of proceeding after taking into account all the circumstances of the proceeding.
One critical circumstance that should be taken into account is the Parties' ability to take part in the proceeding conducted in a language different from the language of the Registration Agreement. According to the Rules, paragraph 10(b), the panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore it is important to objectively assess the Parties' language ability in the proceeding, rather than solely rely on any one Party's mere assertion.
The Panel finds that the evidence provided by the Complainants persuasively shows that the Respondent has sufficient capacity to present its case in English. The Panel particularly notes that the disputed domain name <fx-bgc.com> was used by the Respondent for a website that shows all the contents in English, and that the Respondent did not object to the laying proceedings being English nor did it submit a Response in Chinese.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Having considered all the circumstances of the proceeding, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “fx-bgc”, in which “bgc” is identical with the Complainants' registered word mark and “fx” refers to “foreign exchange” or “financial exchange”, which is exactly within the field of business of the Complainants. The disputed domain consisting of an abbreviation that is related to the Complainants' business and the Complainants' mark is confusingly similar to the Complainants' mark.
The Panel finds that the disputed domain name <fx-bgc.com> is confusingly similar to the Complainants' registered mark. The Panel therefore finds that Complaint fulfills the condition provided in paragraph 4(a)(i) of the Policy.
A complainant is required by the Policy, paragraph 4(a)(ii), to prove that the respondent has no rights or legitimate interests in the disputed domain name. The Complainants have made the pertinent contentions and provided the relevant evidence. There is a consensus view among panels that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the respondent to rebut the showing by providing evidence of its rights or interests in the domain name (see e.g. Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
The Respondent did not make any contention. Although the company name shown on the website of the disputed domain name is “Bornwell Group Company BGC”, the Panel finds that the company name may not be deemed correspondent to the domain name in connection with a bona fide offering of goods or services by the Respondent, as permitted by the Policy, paragraph 4(c)(i).
It is stated on the website at the disputed domain name that Bornwell Group Company “provides professional online-investment services such as foreign exchange” etc. Therefore, Bornwell Group Company directly competes with the Complainants in the field of foreign exchange. When the disputed domain name was registered in August 2006, the Complainants' mark BGC had been registered and used in financial services, including foreign exchange, extensively. It is inconceivable that the disputed domain name was registered and is being used unaware of the direct competitors' reputable mark BGC. The Panel finds on the record that the use of BGC as an abbreviation of the Respondent's company name is more likely to be a ruse to mask the Respondent's illegitimate use of the Complainants' mark in a domain name. Moreover, the Respondent has not participated to this proceeding and has thus not submitted any persuasive evidence of why it chose the company name.
Since the Respondent was not able to effectively rebut the Complainants' prima facie case that the Respondent had no rights or legitimate interests in the disputed domain name, the Panel finds that the Complaint fulfills the condition provided in paragraph 4(a)(ii) of the Policy.
Finally, a complainant is required by the Policy, paragraph 4(a)(iii), to prove that the respondent both registered and is using the domain name in bad faith.
Based on the Complainants' submissions, which were not rebutted by the Respondent, the Respondent created at the disputed domain name a website of Bornwell Group Company to offer its services of foreign exchange. The Respondent displayed the Complainants' mark BGC prominently and repeatedly, either as a separate mark or combined with the company name, on the website. Given the confusing similarity between the disputed domain name and the Complainants' mark shown on the disputed domain name's website, the Internet users were most likely to be confused as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and the services offered on the website. The Respondent in all likelihood registered and used the disputed domain name to profit from the users' confusion with the Complainants' mark.
The Panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a strong inference that the Respondent's purpose of registering the domain name was for commercial gain in bad faith within the meaning of the Policy, paragraph 4(b)(iv), which indicates that bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his/its website or other on line location, by creating a likelihood of confusion with the complainants' mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on his/its website or location (see PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).
Based on the above findings, the Panel finds that the Respondent has registered and is using the domain name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complaint fulfills the condition provided in paragraph 4(a)(iii) of the Policy.
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 <fx-bgc.com> be transferred to the Complainants.
Dr. Hong Xue
Dated: May 27, 2009