WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Börse AG v. EurexTrade
Case No. D2012-0261
1. The Parties
Complainant is Deutsche Börse AG of Frankfurt am Main, Germany, represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany.
Respondent is EurexTrade of Panama City, Panama, represented internally.
2. The Domain Name and Registrar
The disputed domain name <eurextrade.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 10, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Response was filed with the Center on March 7, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 15, 2012. 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
Complainant is the owner of registrations for the trademark and service mark (hereinafter "trademark") EUREX on the register of the German Patent and Trademark Office (Deutsches Patent und Markenamt) (“DPM”), including registration number DE30309064 (word mark), registration dated April 24, 2003, in international classes (ICs) 9, 16, 35, 36, 38, 41 and 42, covering, inter alia, computer programs, printed materials, creating and publishing statistics, finance, services of a stock exchange and electronic stock market, bank services, clearinghouse, financial broker and telecommunications services; registration number DE02066055 (word mark), registration dated May 27, 1994, in ICs 9, 36 and 42, covering, inter alia, stock quotes calculation and publication of the securities index, database services, trading and brokerage services, and financial and technical advice, and; registration number DE02066055 (word and design mark), registration dated February 2, 1998, in ICs 9,16, 35, 36, 38 and 42, covering, inter alia, computer programs, printed materials, collecting and processing information and data in a computer database, financial sector services, including a stock exchange, and an electronic stock market.
Complainant is the owner of a substantial number of country registrations for the word trademark EUREX secured through the Madrid System, with Madrid registration numbers 635015 (dated December 5, 1994) and 812147 (dated July 28, 2003), based on the DTM word mark registrations referred to the preceding paragraph. These registrations cover more than 15 countries.
Complainant is owner of Community Trade Mark registrations for the word trademark EUREX and EUREX US, with registration numbers 000744763 (registration dated June 8, 1999) and 003378973 (registration dated March 21, 2005), respectively.
Complainant is a leading marketplace provider of financial services, including trading in shares and other securities worldwide, and furnishing transaction services. Complainant has more than 3200 employees. Complainant, along with SIX Swiss Exchange AG, jointly operates Eurex, "the world's leading futures and options exchange" (per Complainant). Complainant operates an active commercial Internet website at “www.eurexchange.com”.
According to the Registrar’s verification response, Respondent is the registrant of the disputed domain name.
According to an InterNIC WhoIs report, the record of registration for the disputed domain name was created on December 27, 2007.
Respondent has used the disputed domain name to direct Internet users to a web portal with a homepage captioned with “Eurex Trade”, and sub-captioned with "Harnessing the Strategic Novelty in Global Forex Exchange Market". The home page includes links to a number of sub-pages, with labels including "About Us", "Our history" and "Investment Products". The homepage of the web portal stated:
" Founded in 2002 and a public company since 2007, EurexTrade is the diversified financial services holding company with subsidiaries focused and engaged primarily in Forex trading as well as activities utilizing Eurex platform, a major futures and options exchange for European benchmark derivatives featuring open and low-cost electronic access globally. EurexTrade company is serving private and Institutional Investors, as well as a number of pension funds. Company has over 4 billion in combined assets under management and it is best known for its strategic growth investments using proprietary micro-hedging (TM) technology. "
The webpage headed "Our history" provided, inter alia:
“The Eurex trademark and other certain trademarks and service marks are owned by Deutsche Börse AG (DBAG), its affiliates and subsidiaries. Eurex platform is one of the world's major futures and options exchange for European benchmark derivatives allowing its members for open cost-efficient access to electronic trading in a global manner. Electronic trading and clearing platform of Eurex offers a broad range of products and amongst other, it operates the most liquid fixed Income markets. Eurex was established in 1998 with the merger of Deutsche Terminbörse (DTB, the German derivatives exchange) and SOFFEX (Swiss Options and Financial Futures).”
Complainant has provided evidence, in the form of four e-mails from individuals seeking to determine whether Respondent is associated with Complainant and its affiliated companies, of actual confusion among Internet users between Respondent (and its website) and Complainant and its EUREX business. Several of those e-mails refer specifically to a presumed representation regarding Complainant's affiliation on Respondent’s website to this effect based on the references to the ownership of trademarks described above.
Complainant has provided evidence in the form of a Google search report using the alternative Dominica address of Respondent that shows a number of businesses located at the same address (e.g. "Global Rich Club"), and also referring to questions raised as to the legitimacy of those businesses.
The courier tracking report for the Panama City, Panama, address provided by Respondent in its registration for the disputed domain name could not be located by the courier service engaged by the Center to deliver documents (which ultimately abandoned the delivery effort).
By e-mail to the Center dated March 6, 2012, a representative of Respondent indicated that it had modified the content of its website.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the trademark and service mark EUREX as evidenced by registrations in Germany and elsewhere. Complainant argues that the EUREX trademark is well known. Complainant alleges that the disputed domain name is confusingly similar to its EUREX trademark, particularly as the term "trade" that has been combined by Respondent in the disputed domain name refers to a business conducted by Complainant. Complainant contends that evidence of actual confusion among Internet users supports its claim of confusing similarity.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized or licensed Respondent to use its trademark; (2) broadly conducted searches conducted by Complainant indicate that Respondent does not have any registrations for the sign "Eurextrade”; (3) Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, inter alia, because Respondent’s activities are intended to confuse consumers as to an affiliation with Complainant; (4) Respondent has not been commonly known under the disputed domain name, and the names selected by Respondent for use on its website were chosen to falsely suggest an affiliation with Complainant; (5) Respondent is not making any noncommercial fair use of the disputed domain name because it is likely engaged in fraudulent activities taking advantage of investors on the basis of Complainant's goodwill.
Complainant alleges that the disputed domain name was registered and is being used in bad faith because: (1) Respondent was aware of Complainant and its EUREX trading platform when it registered the disputed domain name; (2) Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a deliberate likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent's website or location.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent does not contest that Complainant holds rights in the trademark EUREX in various jurisdictions.
Respondent contends that it independently created “Eurextrade” as a short form of "European Exchange Markets Trading" that uses common terms.
Respondent argues that Complainant used short forms of two common terms ("European" and "Exchange") to create its trademark, and that Respondent was similarly entitled to use short forms of terms to form its name. Respondent contends that Complainant has used and registered its trademark in connection with other terms, such as “Eurex Bonds”, which is similar to Respondent using “Eurextrade”.
Respondent alleges that its line of business as indicated on its website involving currency trading is different than that of Complainant, and not interfering with the business of Complainant.
Respondent points to the existence of other businesses using “Eurex” in their names, including a Georgian airline, a shutter company in Florida, United States of America (which registered and uses the domain name <eurex.com>), an Italian company, and an Estonian currency exchange company which calls itself "Eurex” and operates at “www.eurex.ee”.
Respondent alleges that it did not refer to the "trademark credit" of Complainant to confuse Internet users, because if it had wanted to confuse Internet users it would have not mentioned those trademark ownerships.
Respondent indicates that, other than on the matter of trademark ownership, it did not otherwise explicitly refer to EUREX or Complainant on its website, and it has now modified its website.
Respondent indicates that there is no official list of companies publicly available for Dominica. It states that there is a corporate registration verification link for Panama on its website.
Respondent indicates that it is commonly known by the disputed domain name as evidenced by the fact that a Google search using "Eurextrade" as the search keyword will reveal thousands of results "of which tens of top listed pages are exclusively related to Respondent's business. Notably, neither of these top search results’ excerpts, nor the corresponding to them websites have any mentioning of Complainant's business". Respondent contends that these results show independent third-party confirmation that Respondent is using the disputed domain name in connection with a bona fide offering of goods and services in the form of investment products.
Respondent indicates that the fact that it is using "virtual office arrangements" is not unusual, accounting for the fact that there are other businesses listed using the same address.
Respondent contends that it did not register and use the disputed domain name in bad faith. Respondent argues that: (1) it acknowledged Complainant's trademark rights; (2) Complainant should have directed parties wishing to know whether Complainant was affiliated with Respondent directly to Respondent, which would have clarified the matter; (3) Respondent has not attempted to sell or transfer the disputed domain name; (4) Respondent did not register the disputed domain name to prevent Complainant from registering it, including in a pattern of such conduct; (5) Respondent and Complainant are not competitors, and Respondent was not seeking to disrupt Complainant's business.
Respondent requests the Panel to reject Complainant's request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief.
These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted evidence of ownership of rights in the trademark EUREX, including by evidence of registrations in Germany and elsewhere, and use in commerce (see Factual Background, supra). Respondent has not contested Complainant's rights in the EUREX trademark. The Panel determines that Complainant has rights in the trademark EUREX, including in Germany and the European Union more broadly.
The disputed domain name directly incorporates Complainant's EUREX trademark and adds the term "trade". Generally the addition of a common descriptive term to a distinctive trademark in a domain name does not suffice to distinguish the domain name from the trademark. Here, the additional term (i.e. "trade") refers to a type of activity in which Complainant trademark owner is commonly engaged. The additional term does not distinguish the disputed domain name from Complainant and its trademark, and, in this Panel’s view, may serve to reinforce or exacerbate confusion among Internet users as to an association between Complainant, on one hand, and Respondent and its website, on the other. Respondent has taken the additional step on its website of expressly referring to Complainant and its trademark registrations without in any way disassociating itself from Complainant, deliberately exacerbating the potential for confusion between the disputed domain name (and Respondent) and Complainant and its trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.
The Panel has determined that Complainant has rights in the EUREX trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized or licensed Respondent to use its trademark; (2) Respondent does not have trademark or service mark rights in the disputed domain name; (3) Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (4) Respondent has not been commonly known under the disputed domain name; (5) Respondent is not making any "non-commercial fair use" of the disputed domain name. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent contends that before any notice of the dispute it had used the disputed domain name in connection with a bona fide offering of services. Respondent indicates this is established by third-party references to its legitimate business shown in Internet search results. Putting aside whether Respondent is engaged in legitimate business activity, it is apparent from Respondent's website that it had knowledge of Complainant's trademark when it registered the disputed domain name and established its Internet business. Because it is engaged in business activities involving the same financial markets as Complainant, Respondent should reasonably have foreseen that Complainant would object to its use of Complainant's trademark in the disputed domain name. Moreover, it is apparent that Respondent made deliberate use on its website of reference to Complainant and its trademark registrations in order to induce Internet user confusion as to Complainant's affiliation with its website. Respondent neither engaged in a bona fide offering of services, nor did it do so prior to effective notice of the dispute.
Respondent contends that it has been commonly known by the disputed domain name, even if it has not acquired service mark rights. Respondent has not established that it was known by the disputed domain name at the time of registration of the disputed domain name. In this Panel’s view, it undertook that registration with obvious knowledge of Complainant and its trademark. It may not rely on notoriety gained from inducing confusion regarding its association with Complainant in order to establish that it was commonly known by the disputed domain name.
Respondent has failed to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent registered the disputed domain name long after Complainant had established rights in the EUREX trademark. Respondent did so with evident knowledge of Complainant’s trademark. The disputed domain name is confusingly similar to Complainant's trademark. Respondent’s alleged line of business is similar to that of Complainant's broader line of business. Respondent has referred to Complainant and its registered trademark on its website in a way designed to confuse Internet users regarding an association between Respondent and Complainant. In this Panel’s view, it has done so for commercial gain.
Respondent does not cure its abusive registration and use of the disputed domain name incorporating Complainant's trademark by belatedly revising the content of its website.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 disputed domain name, <eurextrade.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: March 29, 2012