World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IG Group Limited v. Yaotai Investment management Co, Ltd

Case No. D2013-0232

1.The Parties

Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.

Respondent is Yaotai Investment management Co, Ltd of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <igmarketcn.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on February 1, 2013. On February 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 5, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 6, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2013.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 14, 2013. 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, IG Group Limited is a private limited company incorporated in the United Kingdom. Complainant was founded in the United Kingdom in 1974 and is a provider of online financial derivative trading. Complainant is the registered owner of the trademark IG MARKETS in a number of countries including in China, where the IG MARKETS trademark was registered on September 28, 2010. Complainant offers products worldwide under the trademark IG MARKETS and operates numerous website using domain names incorporating IG MARKETS, including <igmarkets.com> (registered in 2000), <igmarkets.cn> (registered in 2004), and igmarkets.com.cn (registered in 2004).

Respondent offers financial service and products on the website “www.igmarketcn.com” operating under the disputed domain name.

The disputed domain name was registered by Respondent on October 11, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has invented significant financial resources in promoting and developing its IG MARKETS trademarks and that it has high brand awareness globally. Complainant contends that the disputed domain name comprises the word “igmarket” and is confusingly similar to the registered trademark IG MARKETS. Complainant further contends that the addition of the suffix “cn” and the removal of an “s” from the registered trademark in the disputed domain name do not diminish the confusion. Quite to the contrary, Complainant contends that considering that Complainant is active in the Chinese market and has an office in Beijing, the addition of the suffix “cn” strengthens the impression that the disputed domain name belongs to, or is connected with Complainant.

Complainant contends that Respondent has no rights or legitimate interests in respect to the disputed domain name. Specifically, Complainant contends that (i) Complainant has not licensed or otherwise authorized Respondent to use Complainant’s IG MARKETS trademark, (ii) Respondent has not been commonly known by the disputed domain name, and has not registered trademarks corresponding to the disputed domain name, and (iii) the website “www.igmarketcn.com” operating under the disputed domain name is connected with a bank by the name of “CAF Bank FX” with the intent to attract Internet users to the website by trading on the fame of Complainant’s trademark.

Complainant contends that the disputed domain name was registered and is being used in bad faith. Specifically, Complainant contends that (i) Respondent knew of Complainant’s trademark at the time of the registration of the disputed domain name, and (ii) Respondent used the disputed domain name to intentionally attract, for commercial gain, users to the website operating under the disputed domain name by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. Complainant further contends that it has sent a cease and desist letter and other communications to Respondent and Respondent’s failure to reply to the letter and other contacts is evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice.

On February 5, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 6, 2013, Complainant confirmed its request that English be the language of the proceeding. On February 6, 2013, the Center informed Respondent of Complainant’s request and invited Respondent to object to the request. Respondent was further informed that if the Center does not hear from Respondent by a certain date, the Center would proceed on the basis that Respondent has no objection to Complainant’s request that English be the language of the proceedings. Respondent did not comment on the language of the proceeding by the specified due date.

Complainant has submitted evidence that Complainant has sent a cease and desist letter in English to Respondent and that Respondent did not reply to issues raised in the letter nor to object that Respondent did not understand the content of the letter. The Panelist notes that Respondent’s website is in both English and Chinese. The Panelist is prepared to infer that Respondent is able to understand and communicate in English based on the content of its website in English. The Panelist also notes that the disputed domain name is also in English.

Taking all these circumstances into account, the Panelist finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

6.2 Discussion of the Merits

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondents have 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.

A. Identical or Confusingly Similar

Complainant contends that it offers products worldwide under the mark IG MARKETS and that it owns an international portfolio of registered trademarks for IG MARKETS, including in China. Panel finds that Complainant was granted registered trademark IG MARKETS in China on September 28, 2010. The Panel also finds that Complainant operates numerous websites incorporating the trademark IG MARKETS, including <igmarket.com> registered in 2000, <igmarkets.cn> registered in 2004, and <igmarkets.com.cn> registered in 2004. Panel finds that Complainant has trademark rights.

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, 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. The disputed domain name differs from the trademark in missing an “s” and adding “cn”. The Panel finds that the removal of an “s” from the trademark IG MARKETS in the disputed domain name still makes the trademark recognizable within the disputed domain name. The addition of “cn” only adds to user confusion because Complainant already operates websites using domain names <igmarkets.cn> and <igmarkets.com.cn>.

This Panel accordingly finds that the disputed domain name is confusingly similar to Complainant’s IG MARKETS trademark, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no registered trademarks or trade names corresponding to the disputed domain name, that there is no evidence Respondent used the name IG MARKET as a company name or has any other legal right in the name IG MARKET. Complainant contends that no license or authorization of any kind has been given by Complainant to Respondent to use the trademark IG MARKETS. Complainant further contends that Respondent used the disputed domain name for a website belonging to a bank known as “CAF Bank FX” and that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because Respondent is trading on the fame of Complainant’s trademark.

The Panel notes that IG is not an acronym used to describe or is otherwise commonly associated with any financial products or services offered by banks. The Panel thus fails to see why Respondent chose to use the disputed domain name to operate a website belonging to “CAF Bank FX”. The Panel further notes that the website offers financial services and products which are broadly similar to those financial services related to the business of Complainant. The Panel is therefore satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence that demonstrate rights or legitimate interests in the disputed domain name.

The Panel notes that Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. In the absence of any response, Respondent has failed to satisfy the Panel that there are in fact any rights or legitimate interests in the disputed domain name.

The Panel accordingly finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that Complainant may demonstrate that the disputed domain name has been registered and used in bad faith by making a showing that Respondent, in using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

Complainant alleges that due to the fame and goodwill of Complainant’s trademark, Respondent intentionally registered the disputed domain name to attract Internet users to the website operating the disputed domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

The Panel notes that the disputed domain name was registered after the trademark IG MARKETS was registered in China. The Panel accepts the evidence that Complainant tried to contact Respondent through a cease and desist letter and has tried other similar attempts of contact, but Respondent has failed to respond. The Panel finds that Respondent’s failure to respond to the cease and desist letter and other attempts at contact is relevant in a finding of bad faith. Furthermore, Respondent has not submitted any evidence to rebut Complainant’s claims in the Complaint. In the absence of such evidence and in the absence of any conceivable legitimate reason for registering the disputed domain name, in particular the lack of a reason for using the disputed domain name to operate a website belonging to the “CAF Bank FX” bank, the Panel accepts Complainant’s contentions that the disputed domain name was registered with knowledge of Complainant’s trademark and in bad faith.

This Panel accordingly finds that Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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 <igmarketcn.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: April 3, 2013

 

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