WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newedge Group v. PrivacyProtect.org/ Bullion Bacera
Case No. D2012-1640
1. The Parties
The Complainant is Newedge Group of Paris, France, represented by Nameshield, France.
The Respondent is PrivacyProtect.org of Queensland, Australia/Bullion Bacera of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <newedgetarget.com> is registered with Cloud Group Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 17, 2012. The Center sent an email communication to the Complainant on August 22, 2012 requesting confirmation with regards to the Administrative Panel designation on August 22, 2012. The Complainant filed a second amended Complaint on August 22, 2012.
The Center verified that the Complaint together with the amended Complaints 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
The Center appointed Francine Tan as the sole panelist in this matter on September 25, 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
The Complainant states that it was formed in a joint venture by Société Générale and Crédit Agricole CIB and is a leading company in global multi-asset brokerage and execution. It offers a range of clearing prime brokerage and financing services. Headquartered in Paris with offices in the Americas, Asia-Pacific, Europe and the Middle East, the Complainant offers access to more than 85 global exchanges. Its business is driven by delivering industry leading solutions to its clients who are served by teams of multi-lingual employees located in the world’s key financial centers.
The Complainant states that it owns several trade marks comprising or containing the word “newedge” (the “NEWEDGE marks”) including International Registration Nos. 941598 and 976514 for NEWEDGE and THE PULSE OF FINANCE NEWEDGE, respectively.
The disputed domain name was registered on April 27, 2012 and redirects to a website containing information on the Complainant.
On June 18, 2012, the Complainant contacted the registrar of the disputed domain name (“UK2 Group Ltd/ Cloud Group Limited”) and requested the suspension of the website associated to the disputed domain name. The Complainant has also sent a cease and desist letter to the Respondent by email. In the letter, the Complainant noted and alleged that the Respondent had, inter alia, “counterfeited Newedge’s corporate identity”, “used the Company’s corporate address and phone number and National Futures Association registration number as [their] own without [the Complainant’s] authorization”, and “misappropriated wholesale from Newedge’s website its Mission and Vision, Values, Risk Management sections and improperly presented them as [their] own on [their] website.
On June 19, 2012 the said registrar confirmed that the Respondent’s website would be suspended if no response was received from the Respondent within seven days.
5. Parties’ Contentions
The Complainant asserts, firstly, that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights as it incorporates the entirety of the Complainant’s NEWEDGE mark. Furthermore, the disputed domain name was registered after the Complainant’s NEWEDGE marks were registered. It is submitted that the addition of the generic TLD “.com” and the word “target” is not sufficient to escape a finding that the disputed domain name is confusingly similar to its trade mark.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Respondent is not related in any way to the Complainant; the Complainant does not carry out any activity for, nor does it have any business with the Respondent; and the Respondent has not been authorized or licensed by the Complainant to make use of or apply for registration of the disputed domain name. Further, the website associated to the disputed domain name displayed activities related to the Complainant’s business. Prior to the disabling of the Respondent’s website by the Registrar, the said website had been used for “phishing” purposes. Internet users would have been misled into thinking that the website was affiliated to the Complainant. As such, the Respondent’s use of the disputed domain name was neither a fair use nor did it amount to a bona fide offering of goods or services. The Respondent’s attempt to disrupt the Complainant’s business and to derive an advantage from user confusion does not confer any rights or legitimate interests upon the Respondent.
Thirdly, the Complainant submits that the disputed domain name was registered and was being used in bad faith. The Respondent’s website was created with the intention to create confusion and divert Internet users looking for the Complainant and to deceive such users into disclosing private information, all for the Respondent’s commercial gain. This use of the disputed domain name would likely have continued but for the Complainant’s action in submitting the takedown request to the Registrar.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order for a domain name to be transferred, even if no response is filed by the respondent:
(i) 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) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has in this case shown that it is the owner of, and has rights in, the NEWEDGE mark. The disputed domain name differs from the mark NEWEDGE merely in the addition of the word “target”. Paragraph 1.2 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides a statement of the well-established view of UDRP panelists in many previous cases under the Policy that in assessing the issue of whether there is confusing similarity, “the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion”.
In this case, the Complainant’s NEWEDGE mark is clearly recognizable especially since it appears at the beginning of the disputed domain name. The addition of the common word “target” is insufficient to prevent the disputed domain name from being considered confusingly similar to the Complainant’s NEWEDGE mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Having viewed the Respondent’s website (prior to its suspension) and that of the Complainant, what is clear to the Panel is that there has been a deliberate and substantial copying of the look, style and contents of the latter’s website which is deceptive in nature which cannot be considered bona fide. An Internet user looking for the Complainant would, not surprisingly, be confused into thinking that the webpage located at “www.newedgetarget.com”, to which the disputed domain name resolved, is the Complainant’s. The evidence supports a finding that the Respondent is not 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” (paragraph 4(c)(iii) of the Policy). There is, moreover, no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel draws an adverse inference from the Respondent’s failure, both to file a Response in these proceedings and to respond to the Complainant’s cease and desist letter.
In the circumstances, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel also finds from the evidence tendered that the Complainant has established the circumstances set out in paragraph 4(b)(iv) of the Policy, namely that “by using the [disputed] domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location”.
The incorporation of the entire NEWEDGE mark in the disputed domain name and the way which the Respondent had mimicked the Complainant’s website and passed it off as its own constitute sufficient grounds under paragraph 4(b)(iv) of the Policy for a finding that the disputed domain name has been registered and used in bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
For 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 <newedgetarget.com> be transferred to the Complainant.
Dated: September 28, 2012