WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IG Group Limited v. Above.com Domain Privacy / Belcanto Investment Group Limited
Case No. D2013-0177
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 Above.com Domain Privacy of Beaumaris VIC, Australia / Belcanto Investment Group Limited of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <igmarketuk.com> (the “Domain Name”) is registered with Above.com Pty Ltd. (the “Registrar”).
3. Procedural History
Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013, naming Above.com Domain Privacy as the Respondent, based on information in the WhoIs record. In response to the Center’s request for registrar verification, the Registrar transmitted by email to the Center its verification response on January 29, 2013, which identified a different registrant, Belcanto Investment Group Limited, from the WhoIs record, apparently due to a registration service that shields the name of the actual registrant. On January 29, 2013, the Center notified Complainant by email of the registrant name and contact information received from the Registrar, and stated that Complainant may wish to consider amending the Complaint to add the name and contact information of the registrant identified by the Registrar. On January 29, 2013, Complainant replied by submitting an amendment that included the name and contact information of Belcanto Investment Group Limited.
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 Respondent Above.com Domain Privacy / Belcanto Investment Group Limited of the Complaint, and the proceedings commenced on January 30, 2013. The Center noted that the Response was due on February 19, 2013, in accordance with the Rules. Neither Above.com Domain Privacy nor Belcanto Investment Group Limited submitted any response. Accordingly, the Center notified Respondent of its default on February 20, 2013. The Center sent its notices to both Above.com Domain Privacy and Belcanto Investment Group Limited.
The Center appointed Grant L. Kim as the sole panelist in this matter on March 7, 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 an international financial services company based in the United Kingdom. Complainant operates numerous websites with IG MARKETS-based domain names, and has asserted its ownership of several trademark registrations for the mark IG MARKETS in various jurisdictions, including Australia, the European Union, the United States, China, Singapore, and Japan.
Respondent Belcanto Investment Group Limited is the entity identified by the Registrar Above.com Pty Ltd. as the current owner of the Domain Name <igmarketuk.com>, which was registered on June 20, 2012. As of March 15, 2013, the Domain Name resolved to an active website that displayed links leading to third party services, including investment products.
5. Parties’ Contentions
Complainant states that it was founded in the United Kingdom in 1974, and that it is a pioneer of financial derivatives online trading. Complainant asserts that it has tens of thousands of clients worldwide and in the year to May 2012, achieved a turnover of GBP 366.8 million. Complainant claims that it has rights in the IG MARKETS mark, that it has spent significant sums promoting and developing this mark, and that the mark has substantial inherent and acquired distinctiveness for the products and services for which it is protected. In support of its claims, Complainant offers evidence that it owns numerous trademark registrations around the world, including Community Trademark Registration No. 6366116; Australia Trademark Registration Nos. 1283174, 1283166, and 1283167; and United States Trademark Registration No. 3826809. Complainant also states that it operates numerous IG MARKETS-based domain names, including <igmarkets.com>, registered in 2000, and owns many other similar domain names, including <igmarkets.co.uk> and <igmarkets.com.au>. Complainant further asserts that it has sponsored various sporting activities, and that the IG MARKETS mark has attained considerable brand recognition in the global marketplace, as evidenced by surveys showing significant recognition of IG Markets among traders in the UK, Australia, and other countries.
Complainant contends that the Domain Name is confusingly similar to its registered trademarks because the Respondent’s addition of the generic top-level domain “.com” does not distinguish the Domain Name from Complainant’s mark. Furthermore, Complainant asserts that the suffix “uk” contributes to the impression that the Domain Name is connected to Complainant because Complainant’s primary market is the United Kingdom.
Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant states that Respondent has no registered trademarks or trade names corresponding to the Domain Name, and that there is no evidence suggesting that Respondent has used <igmarketuk.com> in any other way that would give it rights or legitimate interests in the name. Complainant further asserts that it has not granted any license or authorization to Respondent to use the IG MARKETS mark. Complainant submits that the mere registration of a domain name or Respondent’s use of the Domain Name in connection with sponsored websites does not establish rights or legitimate interests in the Domain Name.
Finally, Complainant contends that the Domain Name was registered and is being used in bad faith. Complainant argues that its IG MARKETS mark has considerable value and goodwill, and that Respondent is improperly using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain, as evidenced by the existence of revenue-generating sponsored links on the Domain Name website. Complainant contends that as long as the sponsored links are generating commercial gain for some party, it is not relevant whether Respondent itself is receiving revenue or influencing the selection of links. Complainant contends that bad faith is further supported by Respondent’s failure to reply to Complainant’s cease and desist letter of September 19, 2012, which informed Respondent that the Domain Name violated Complainant’s trademark rights in IG MARKETS, and requested a voluntary transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel finds that it was properly constituted pursuant to the Rules and that it has authority to decide this dispute. The Panel notes that the Registrar confirmed that the Policy applies to the Domain Name. The Panel also finds that notification of the Complaint and the default was properly sent to Respondent’s physical and email addresses under paragraph 2(a) of the Rules, including both the address of Above.com Domain Name Privacy (as listed in WhoIs) and the address provided by the Registrar for Belcanto Investment Group Limited. The Panel further notes that notwithstanding Respondent’s failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not Complainant is entitled to the relief requested under the Policy, the Rules, the Supplemental Rules, and applicable substantive law.
The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corp. v. Bay Verte Machinery, Inc. d/b/a/ The Power Tool Store, WIPO Case No. D2002-0774. The Panel has reviewed the record in light of the three requirements set forth in paragraph 4(a) of the Policy, which entitle Complainant to a transfer or cancellation of the disputed Domain Name if Complainant demonstrates:
(i) The 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) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy this element under paragraph 4(a), the Panel must find that (1) Complainant has demonstrated its rights in the IG MARKETS mark; and (2) the Domain Name is identical or confusingly similar to the Complainant’s mark.
Complainant has adequately demonstrated its rights in the IG MARKETS mark. Complainant has submitted uncontested evidence that it owns IG MARKETS trademark registrations in multiple jurisdictions, and has also presented uncontested evidence of its use of the mark on websites such as “www.igmarkets.com".1 Complainant’s ownership and use of the registered IG MARKETS mark satisfies the initial requirement that Complainant has valid rights in the asserted mark. See, e.g., Micro Electronics, Inc. v. Strateks Corp., WIPO Case No. D2005-0129 (“[t]he existence of the registered trademarks satisfies the threshold requirement of having rights in the mark”).
Complainant has also established that the Domain Name is identical or confusingly similar to Complainant’s IG MARKETS mark. The Domain Name is the singular form of Complainant’s IG MARKETS mark with the suffix “uk” added. The difference between a plural or singular form is negligible, and the addition of the “uk” suffix also fails to sufficiently distinguish the Domain Name from Complainant’s IG MARKETS mark. On the contrary, adding “uk” increases the likelihood of confusion because Complainant is headquartered in the United Kingdom. See Accor v. Above.com Domain Privacy / Belcanto Investment Group, WIPO Case No. D2012-1179 (“adding geographic indicators likely enhances confusion where complainant operates businesses in such areas”). Further, it is well settled that adding a top-level identifier such as “.com” to a domain name does not defeat a finding of confusing similarity. See, e.g., TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s IG MARKETS mark.
B. Rights or Legitimate Interests
With respect to the second element, Complainant should make at least a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Once the Complainant has made a prima facie case, Respondent should present evidence that it has rights or legitimate interests. See Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043 (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent in the disputed domain name. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name . . . .”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (“[T]he element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent,” and that requiring the Complainant to make more than a prima facie showing would impose “the often impossible task of proving the negative.”).
Complainant has presented uncontested evidence that it has not licensed or otherwise authorized Respondent to use Complainant’s mark, or to register a domain name reflecting the mark. Furthermore, Respondent has not refuted Complainant’s claim that before notice of the dispute, Respondent did not use the Domain Name in connection with an offering of any goods or services that would support Respondent’s rights or legitimate interests in the Domain Name. As shown in Annex 11, Respondent displays only sponsored links at the Domain Name website. There is no evidence that Respondent previously conducted a legitimate business under, or has ever been commonly known by any variation of the Domain Name.
The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not submitted a reply. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a showing that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy offers non-exclusive examples of what may constitute evidence of bad faith, including:
(iv) circumstances indicating that Respondent intentionally is using the Domain Name in an attempt to attract, for commercial gain, internet users to its 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 Respondent’s website or location or of a product or service on its website or location.
Respondent’s website includes what appears to be sponsored links to third party websites. Some of these links, such as “Ig Market” and “Ig Markets UK,” lead to third party investment-related websites. These links appear to target consumers searching for Complainant’s services on Respondent’s website. Indeed, not only do the links refer to “Ig Market/s,” the top of the webpage emphasizes: “igmarketuk.com The Best Place To Find Ig Market UK”. The diversion of consumers searching for Complainant’s website to a website that links to competing related products supports the inference that Respondent has sought to profit from the goodwill of Complainant’s IG MARKETS mark. See Zedge Ltd. v. Moniker Privacy Services / Aaron Wilson, WIPO Case No. D2006-1585 (use of parking websites to generate click-through fees from links to competing products qualifies as bad faith, because it intentionally capitalizes on the goodwill of third party trademarks).
The conclusion that Respondent’s website seeks to divert Internet users looking for Complainant’s financial services is further supported by evidence of the strong recognition of the IG MARKETS mark and the arbitrary nature of the <igmarketuk.com> domain name. While the term “market” may be descriptive, “ig” appears to be an arbitrary term with no inherent association with “market,” except in connection with the IG MARKETS mark owned by Complainant. Similarly, while “uk” may be descriptive of the United Kingdom, Respondent’s use of this particular geographic region in combination with “ig” and “markets” does not appear to be a mere coincidence, given that Complainant is based in the UK. Thus, Respondent’s registration and use of the arbitrary term “igmarketuk,” which is associated strongly with Complainant, supports the inference that Respondent was motivated by an improper purpose for its registration and use of the Domain Name. See Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582 (“Registration of an arbitrary trademark with an exclusive connection to a commercial product and limited potential utility as a common conveyor of information supports an inference of bad faith”.); see also Pharmacia & Upjohn Company v. Xanax Advocates, WIPO Case No. D2000-0817.
The Panel notes that Respondent’s website occasionally routes to a notice reading: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain [sic] any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)”. The reference to “Sponsored Listings” confirms that the website is generating commercial gain for some party. The assertion that the service provider and domain owner do not maintain “any relationship” with the advertisers is vague and does not necessarily disclaim any financial benefit for Respondent. Furthermore, as Complainant notes, even if Respondent does not directly obtain revenue from, nor contract with, the advertisers on its website, a finding of bad faith is not necessarily excluded where some recipient is deriving financial gain. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. The Panel agrees with Complainant and Villeroy that although paragraph 4(b)(iv) requires Respondent to intend to attract Internet users to its website for commercial gain, it does not specify that Respondent itself needs to be the recipient of the commercial gain. A contrary policy would permit Respondent to infringe Complainant’s rights “with impunity” by allowing third parties to profit from its wrongful conduct. Id.
Finally, two other factors support an inference of bad faith. First, Complainant has submitted unrebutted evidence that Respondent failed to respond to Complainant’s cease and desist letter. See Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022 (noting the “significant authority from earlier UDRP decisions . . . that a failure on the part of the [r]espondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use”); see also Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679 (although not dispositive, lack of response to cease and desist letters may be consistent with bad faith). Second, Respondent has a prior history of registering domain names for well-known marks. See Intesa Sanpaolo S.p.A. v. Belcanto Investment Group Limited / Above.com Domain Privacy, WIPO Case No. D2012-2378; Accor v. Above.com Domain Privacy / Belcanto Investment Group, WIPO Case No. D2012-1179. In both of these proceedings, the panel ordered transfer of the disputed domain name to the complainant. Although this prior history does not by itself establish bad faith, it nonetheless supports an inference of bad faith. See Arcadia Group Brands Limited, trading as Topshop v. Richard Yaming, WIPO Case No. D2012-1490 (prior evidence of confusingly similar domain name registrations contributes to determination of bad faith).
Considering all these factors together, the Panel concludes that Complainant has submitted sufficient evidence to support the conclusion that Respondent likely registered and used the Domain Name in reliance upon Complainant’s well-known and established mark IG MARKETS. Moreover, Respondent has offered no reply or rebuttal to the Complaint. Therefore, the Panel finds that Complainant has established Respondent’s bad faith registration and use of the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <igmarketuk.com> be transferred to Complainant.
Grant L. Kim
Date: March 21, 2013
1 The Panel notes that recent access of “www.igmarkets.com” resulted in redirection to “www.nadex.com,” a financial trading website that refers to the mark NADEX instead of IG MARKETS. Complainant, however, has submitted evidence that it has registered trademark rights in the IG MARKETS mark in multiple countries, and Respondent has not submitted any evidence that those rights are invalid or have been abandoned.