WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stoxx AG v. euro stoxx fund
Case No. D2015-0342
1. The Parties
The Complainant is Stoxx AG of Zurich, Switzerland represented by Meisser & Partners, Switzerland.
The Respondent is euro stoxx fund of Paris, France (see discussion below).
2. The Domain Name and Registrar
The disputed domain name <eurostoxx.org> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date 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.
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 March 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 1, 2015. 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 is a Swiss based company. The Complainant is an established and leading financial index specialist. It has traded under the name EURO STOXX since 1972. The EURO STOXX indices represent the financial status of European companies. For example, the EURO STOXX Index represents large, mid and small capitalization companies of 12 Eurozone countries: Austria, Belgium, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal and Spain. The Complainant's indices are licensed to the world's largest issuers of financial products, capital owners and asset managers as well as to more than 500 companies around the world, and are used not only as underlying indices for financial products such as exchange-traded funds (ETFs), futures and options, and structured products, but also for risk and performance measurement.
The Complainant is the owner of various trademark registrations for EURO STOXX, for example Community Trade Mark CTM 001396407 EURO STOXX, filed on November 23, 1999 and registered on February 11, 2001, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant also promotes its business via a website at "www.eurostoxx.com".
On July 14, 2013 the Respondent registered the Disputed Domain Name.
The Disputed Domain Name has been used by the Respondent for a website which uses material copied from the Complainant's own website and other literature.
5. Parties' Contentions
The Complainant's case can be summarised as follows.
a) The Disputed Domain Name is identical or confusingly similar to the EURO STOXX trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves makes use of the Complainant's EURO STOXX mark in order to present itself as a business which impersonates the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The identity of the Respondent is unclear. The filed evidence establishes that no entity with a name corresponding to that provided by the Respondent actually exists, and the address details the Respondent has provided are fictitious. That does not however matter as the Panel is satisfied that proper notice of this proceeding was provided in accordance with the Rules to whoever the Respondent really is. The requisite material has also been served electronically to the email addresses provided by the Respondent. The Panel adopts the approach set out in paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". The Panel also agrees with the statement in the WIPO Overview 2.0 on this issue that "Panels have also noted that: (i) there are limits to what can reasonably be done by parties and providers to identify an 'underlying registrant' in the context of the UDRP, and if WhoIs information is not readily usable for communication purposes in such case the registrant must expect to bear any consequences; and (ii) in cases of ambiguity as to the identity of the proper respondent, what matters in terms of notification obligations under the UDRP Rules is not so much the name that may 'formally' appear on the complaint, but that the latter has been duly notified to the reasonably available contact information of the 'registrant', whatever its identity."
Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various registered trademarks for EURO STOXX.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. It is well established that the ".org" Top Level Domain suffix is typically to be ignored in considering this comparison. Accordingly, the Disputed Domain Name, as registered by the Respondent, is identical to the EURO STOXX trademark save for the omission of the space between the two words which is a trivial and immaterial difference (and which in any case could not be included within a character string representing a domain name for technical reasons). Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
i. before any notice of the dispute, respondent's 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. the respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
iii. the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the EURO STOXX trade mark. The Complainant has prior rights in the EURO STOXX trade mark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the confusingly similar nature of the Disputed Domain Name to the EURO STOXX trade mark, the fact that the term "eurostoxx" has no other obvious meaning apart from in relation to the Complainant or its products, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name, and the evidence as to how the Disputed Domain Name has been used by the Respondent leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website which has been operated by the Respondent at the Disputed Domain Name has in the past contained material (this material appears to have been removed at some stage prior to the filing of the Complaint) that has clearly been copied from the Complainant's own website. It is not entirely clear to the Panel what the Respondent's intent was as the website in question does not, so far as the Panel can determine, comprise anything more than some poorly plagiarized material together with other material (for example, suggesting the website is that of a law firm) which makes no real sense when reviewed with any care. Nevertheless this material is in the view of the Panel sufficient to be likely to fall within the conduct referred to in paragraph 4(b)(iv) of the Policy as evidence of bad faith namely "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". Whilst the precise motivation of the Respondent is unclear the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have, and in the circumstances the Panel is justified in inferring that the Respondent's conduct is captured by Policy paragraph 4(b)iv. Further the Panel cannot readily conceive of any legitimate use that the Respondent could make of the Disputed Domain Name. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <eurostoxx.org> be transferred to the Complainant.
Nick J. Gardner
Date: April 8, 2015