WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IG Group v. Ray Wells, Marketstheworld Limited / PrivacyProtect.org
Case No. D2012-1994
1. The Parties
The Complainant is IG Group of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ray Wells, Marketstheworld Limited / PrivacyProtect.org, of Isle of Man, United Kingdom of Great Britain and Northern Ireland / Nobby Beach, Australia, respectively.
2. The Domain Name and Registrar
The disputed domain name <ignidex.com> is registered with Sibername Internet and Software Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 15, 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 amendment to the Complaint on October 15, 2012.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on November 22, 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 disputed domain name was originally registered on April 27, 2012 in the name of PrivacyProtect.org with an address in Queensland, Australia but it is currently owned by Ray Wells, Marketstheworld Limited with an address in the Isle of Man, United Kingdom. Both of these entities are jointly named as the Respondent.
The Complainant is the owner of registrations for the trademarks IG and IG INDEX as well as of a number of domain names incorporating these marks.
The Complainant was founded in 1974 and claims to be a pioneer in the trading of financial derivatives online. It states that it has thousands of clients all over the world and offices in many countries, that it had a turnover in the year ending May 2012 of GBP 366.8 million, and that it is very active in sponsoring various kinds of sporting activities.
The Complainant has an international portfolio of registered trademarks for IG and IG INDEX, and it offers its products worldwide under the name and mark IG INDEX, inter alia through its websites at “www.igindex.com” and “www.igindex.co.uk”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <ignidex.com> is confusingly similar to its trademark IG INDEX. The only difference being that the letter “i” comes after the letter “n”. There is therefore a high risk that anyone looking for the Complainant’s website at the domain name <igindex.com> could mistype the name and so end up at the Respondent’s site. Anyone seeing the disputed domain name is bound to mistake it for a name related to the Complainant. There is therefore a likelihood of confusion, or at least an association, with the Complainant and its name. There is also a strong possibility for confusion that there could be some kind of commercial relationship between the Respondent and the Complainant. The Respondent is exploiting the Complainant’s goodwill which may result in dilution and other damage to the Complainant’s name and trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: the Respondent has no registered trademarks corresponding to the disputed domain name; the Complainant has not given the Respondent a licence or authorization for it to use its name and trademark; the Respondent is not one of the Complainant’s authorised dealers; it has never had a business relationship with the Respondent; the Respondent is not commonly known by the disputed domain name; and the obvious intention of registering the disputed domain name was to divert potential customers away from the Complainant and to sponge off the Complainant’s name and trademark.
On the issue of bad faith, the Complainant contends that its name and trademark IG INDEX is a reputed mark with a very substantial reputation in the online trading industry and that this must therefore be one of the reasons why the Respondent registered the disputed domain name. The Complainant wrote to the Respondent pointing out that the use of its name and trademark by the Respondent was unauthorised. However the Respondent did not reply to this approach, or to a subsequent reminder. The Complainant contends that this is clear evidence of bad faith. Furthermore, the website at the disputed domain name gives every appearance of being an attempt to lure customers away from the Complainant. It is the Complainant’s contention that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is merely misleadingly diverting customers for its own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 5(b)(i) of the Rules specifies that a respondent may “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[.]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present its case, but it has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences therefrom as it considers appropriate.” For example, the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443, stated that “[s]ince the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In these proceedings, since the Respondent has chosen not to submit a response, its default entitles the Panel to conclude that it has no arguments or evidence to rebut the Complainant’s assertions, and the Panel will therefore make its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademarks IG and IG INDEX and it supplied details of these.
It is by now well established that, when comparing a domain name with a trademark, a gTLD such as – in this case – “.com” may be disregarded. See, for example, Rollerblade, Inc, v. McCrady, WIPO Case No. D2000-0429 in which the panel found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademark.
The question of confusing similarity lies at the very heart of trademark conflicts, where the test is whether the names are phonetically, visually, or conceptually similar. The same thinking is carried over into decisions under the Policy because the words “Identical or confusingly similar” appear in paragraph 4(a)(i) thereof. The comparison in the present case is between the trademark IG INDEX and the expression “ignidex”. In the latter we have exactly the same letters as in the trademark IG INDEX but without a space between the second and third letters and an inversion of the letters I and N. There is considerable similarity between the two. In the opinion of the Panel, this is a clear case of “typosquatting” when, as was said in Edmunds.com Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, “the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic….. the practice of typosquatting has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark”. In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the consensus view is that “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
There can be little doubt that in this case too the disputed domain name and the mark are confusingly similar and so the requirement of paragraph 4(a)(i) of the Policy is therefore met.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interests in the disputed domain name and it is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, then the burden of production shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden of production and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in its favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the Complainant’s name and trademark IG INDEX.
The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, so that the requirements of paragraph 4(a)(ii) of the Policy are also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that a respondent has registered and is using a domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of the provisions under paragraph 4(b) of the Policy.
The registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business and it is, in this Panel’s opinion, an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. These fall squarely within paragraphs 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainant’s name and trademark at the time of registration of the disputed domain name. The trademark IG INDEX is known and recognised throughout the financial industry, and the Respondent is also a financial trader as there is a statement on its website that it is a “Licensed and Regulated Binary Options” trader with a platform that offers opportunities for making a quick profit on various financial world markets.
In BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007 it was held that the respondent acted in bad faith when registering the domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the domain name, and because of the similarity of products, all of which suggested a knowledge of the complainant’s rights in the trademarks.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut the Complainant’s arguments on this point and the Panel concludes that paragraph 4(a)(iii) has also 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 <ignidex.com> be transferred to the Complainant.
David H Tatham
Date: November 30, 2012