WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euronext N.V. v. heping li/李和平
Case No. D2013-1481
1. The Parties
The Complainant is Euronext N.V. of Amsterdam, Netherlands, represented by Arent Fox LLP, United States of America.
The Respondent is heping li/李和平 of Pingquan, Hebei Province, China, self- represented.
2. The Domain name and Registrar
The disputed domain name <euronextcarbon.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 23, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On August 24, 2013, the Complainant confirmed its request that English be the language of the proceedings with additional arguments. On August 26, 2013, the Respondent requested Chinese be the language of the proceedings.
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 the Respondent of the Complaint, and the proceedings commenced on August 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2013. The Response was filed with the Center on September 16, 2013.
In the above-mentioned Response, the Respondent appeared to be willing to settle the dispute with the Complainant. Accordingly, on September 16, 2013, the Center requested the Complainant to confirm if it would like to suspend the proceeding to explore the possible settlement between the parties. The Complainant did not reply to this matter by the specified due date.
The Center appointed Douglas Clark as the sole panelist in this matter on September 26, 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.
The language of the Registration Agreement is in 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.”
The Complainant requested the language of the proceedings be in English on the grounds that the Respondent is familiar with English because the disputed domain name resolved to a web page solely in English.
The Respondent requested the language of proceedings be Chinese and filed a Response in Chinese. From reading the Response the Panel finds that the Respondent has understood the Complainant’s case.
In those circumstances, the Panel accepts the Complaint in English and the Response in Chinese. The Panel will render its decision in English.
4. Factual Background
The Complainant, Euronext N.V., was formed on September 22, 2000 following the merger of the Amsterdam Stock Exchange, Brussels Stock Exchange and Paris Bourse.
The Complainant has used its name and the mark EURONEXT in connection with the provision of equities and derivatives markets as well as clearing and information services.
The Complainant is the owner United States Federal Trademark Registration No. 2,689,802 for the mark EURONEXT registered on February 25, 2003, covering a wide range of services, including financial and business information services. The Complainant also owns active trademark registrations worldwide for the mark EURONEXT alone or marks incorporating “euronext”, including, for example, in China, the European Union, Argentina, Canada, Hong Kong, China, Japan, Singapore and numerous other countries.
The Complainant uses its trade name and the EURONEXT mark in domain names to provide information and services on the Internet, including, for example, at the domain names <euronext.com> and <nyseeuronext.com>.
The disputed domain name was registered on September 5, 2012. It originally resolved to a website in the name of Euronext Carbon Trading Ventures Ltd (Euronext Carbon). Euronext Carbon offered services trading in Verified Emission Reductions (VERs). The website was written entirely in English.
Subsequently, Euronext Carbon changed its name to Demeter Venture UK Ltd (Demeter). The name was changed on the website under the disputed domain name to Demeter. Demeter stated it specialized in Verified Carbon Standard credits and VERs.
The disputed domain name was originally registered in the name of Yang Kunpeng. After a cease and desist letter was sent, a Mr. Teng replied that the company name and website had been changed, but stated that “[t]he website of WWW.Euronextcarbon.com is our private property.”
The Respondent subsequently became the registered owner of the disputed domain name.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is nearly identical and confusingly similar to the EURONEXT mark. The disputed domain name <euronextcarbon.com> uses the Complainant’s EURONEXT mark in its entirety. Consumer confusion is, particularly, likely because the disputed domain name <euronextcarbon.com> uses the Complainant’s EURONEXT mark as a prefix with the generic word “carbon”. As such, “euronext” serves as the sole distinctive element of the disputed domain name.
The Complainant further contends is known as and has been lauded for its environmentally friendly initiatives and is the only carbon-neutral global exchange operator. Since the word “carbon” is closely related to the Complainant’s activities and environmental initiatives and recognitions under the Complainant’s EURONEXT mark, the combination of “carbon” with the Complainant’s EURONEXT mark compounds the confusion between the Complainant’s EURONEXT mark and the disputed domain name.
Internet users are therefore likely to believe that the disputed domain name is related to, associated with, or authorized by the Complainant. It is precisely because of the association with the Complainant’s EURONEXT mark that the Respondent registered the disputed domain name.
No rights or legitimate interests
The Complainant contents that the Respondent has had no use of, nor any demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) in connection with any bona fide offering of goods or services before any notice to the Respondent of the dispute.
Euronext Carbon was founded on October 25, 2011, years after the Complainant registered and established rights in its EURONEXT marks.
Neither the Respondent nor the previously named registrant, Yan Kunpeng, has ever been commonly known by the disputed domain name.
The Respondent has not and is not making any legitimate, noncommercial or fair use of the disputed domain name. The disputed domain name currently directs to a web page with various links to seemingly unrelated pages.
The Respondent is not a licensee of the Complainant and has never received any permission or consent to use the Complainant’s EURONEXT mark or to register the disputed domain name.
Registered and Used in Bad Faith
The Complainant alleges the Respondent registered and has been using the disputed domain name in bad faith to play off the fame of the Complainant’s EURONEXT mark and profit from the consumer confusion that the Respondent is creating with the disputed domain name. The Respondent has linked the disputed domain name to a web page of its commercial website that makes an unauthorized use of the Complainant’s EURONEXT mark.
The disputed domain name was registered in the name of the Respondent following notification by the Complainant to the registrant of the Complainant’s rights in its EURONEXT mark and the current dispute is further evidence of the Respondent’s bad faith in registration of the disputed domain name.
The Complainant further contends that the Respondent’s correspondence with the Complainant included a veiled offer to sell the disputed domain name to the Complainant.
The Respondent replied as set out below. The headings match those used by the Respondent. Some of the points overlap.
Identical or confusingly similar
“Euronext Carbon” is being used for carbon trading related business. It is a contraction of Euro Next Carbon. The name is designed to reflect the hope of the development of the European carbon trading market.
The Complainant is not involved in carbon trading. The evidence it provided about carbon neutrality is related to its social responsibilities to reduce the use of carbon.
Rights or Legitimate interests
The Complainant’s Chinese trademark registration certificate is for EURONEXT and not for “Euronext Carbon”. The difference between EURONEXT and “Euronext Carbon” is clear and there is no conflict.
“Euronext Carbon” has been used for trading in carbon. It has never been intended to be sold to the Complainant or its competitors. It was only after being contacted by the Complainant’s lawyers which caused problems for the Respondent that it was proposed that if the Complainant wanted to buy the disputed domain name the Respondent may consider an offer. No offer has been forthcoming.
Registered and used in bad faith
“Euronext Carbon” has been used for a year. It has not been offered for sale to the Complainant or its competitors. It has not been used to obtain improper profits, and the Complainant has not evidence to show it has.
The Complainant has rights in EURONEXT. The combination of “euronext” and the generic word “carbon” is not going to cause confusion.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s EURONEXT trademark. The disputed domain name incorporates the Complainant’s EURONEXT trademark entirely.
The Panel notes the Respondent’s argument that the addition of the word “carbon” differentiates the disputed domain name from the mark. However, the mere addition of generic words such as the term “carbon” does not dispel the confusing similarity.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent has only asserted in its Response that “Euronext Carbon” is not the same as “Euronext” and that it chose the name to reflect the future of carbon trading in Europe. It asserts no other rights.
Paragraph 4(c) of the Rules set out how a respondent may establish rights or legitimate interests. It provides:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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):
(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.”
The Respondent has not provided any evidence of this type.
The Complainant has on the other hand asserted that it is not authorised or licensed the Respondent to use the disputed domain name or the trademark EURONEXT.
The Panel does not accept that the use of the word “carbon” is legitimate particular when it is used in relation to trading what are effectively financial instruments. The Complainant may not facilitate the trading of VERs, however, it is a related business such that the Complainant does have legitimate interests to protect.
Further, the Respondent admits that it is related to Euronext Carbon which changed its name to Demeter. The fact that Demeter changed its name is an acknowledgement that Demeter did not have rights or legitimate interests in the name “Euronext Carbon”.
Accordingly, the second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name has been registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
(iv) “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. The registration and use of <euronextcarbon.com> as the disputed domain name for a trading platform can only have been designed to attract Internet users to the website.
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 <euronextcarbon.com> be transferred to the Complainant.
Date: October 21, 2013