WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
STOXX AG v. Comdot Internet Services Private Limited
Case No. D2015-0387
1. The Parties
1.1 The Complainant is STOXX AG of Zurich, Switzerland, represented by Meisser & Partners, Switzerland (the "Complainant").
1.2 The Respondent is Comdot Internet Services Private Limited of Mumbai, Maharashtra, India (the "Respondent").
2. The Domain Name and Registrar
2.1 The disputed domain name <eurostoxx.com> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2015, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2015.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on April 23, 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
4.1 The Complainant in this administrative proceeding is STOXX AG incorporated in Switzerland and is an established and leading index specialist with a European heritage. The Complainant launched its first STOXX index in 1998 including the EURO STOXX 50 index, which marked the beginning of the Complainant's story. The Complainant claims to have since then been at the forefront of market developments, continuously expanding its portfolio of innovative indices. The Complainant is thus said to be committed to delivering high-quality, reliable and trusted indices to its global client base. The indices are said to be 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 for underlyings 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 said to be also the marketing agent for indices of Deutsche Borse and SIX, among them the DAX and SMI indices.
4.2 The Complainant also provides various indices including various EURO STOXX indices. The EURO STOXX indices represents European companies including large, mid and small capitalization companies of 12 Eurozone countries, namely Austria, Belgium, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal and Spain. The Complainant's registered trademarks namely, STOXX, EURO STOXX and EURO STOXX 50, are quoted in the financial press worldwide and are internationally used by licensees for financial instruments.
4.3 The Respondent is Comdot Internet Services Private Limited of Mumbai, India according to the WhoIs database attached to this proceeding, and the Disputed Domain Name was created on September 9, 2002; however, the Complainant claims that the Respondent registered it only in September 2014.
5. Parties' Contentions
5. 1 The Complainant is the owner of the following trademark registrations:
i) International Registration 6999180 EURO STOXX with priority date of March 4, 1998, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide;
ii) Community Trade Mark 001396407 EURO STOXX, filed November 23, 1999, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;
iii) International Registration 7072730 EURO STOXX 50, with priority date of March 4, 1998 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 with numerous designations under the Madrid Agreement and the Madrid Protocol worldwide;
iv) Community Trade Mark 001396415 EURO STOXX 50, filed November 23, 1999, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42; and
v) Indian Registration No. 1697261 STOXX in class 36 and Indian Registration No 1697262 STOXX in class 41.
5.2 The Complainant contends that the Disputed Domain Name <eurostoxx.com> is identical or confusingly similar to the Complainant's trademarks in which the Complainant has rights in that the Disputed Domain Name consists of the Complainant's trademark EURO STOXX and the generic Top-Level Domain ("gTLD") ".com". The Complainant contends further that the Complainant satisfies the threshold requirement of having trademark rights having registered the trademark EURO STOXX in various classes and countries worldwide.
5.3 The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and in support of this contention the Complainant advances the following submissions. The Respondent has failed to come forward to provide sufficient evidence demonstrating any rights or legitimate interests the Respondent may have. Secondly, the Complainant registered the EURO STOXX trademarks since 1998 and those trademarks had become well known in the financial world; in addition those trademarks were registered in the Respondent's alleged home country being India, before the Respondent chose to register the Disputed Domain Name, which the Complaint claims it occurred only in 2014. Thirdly, as established by previous panels the Complainant's STOXX and EURO STOXX trademarks have been generally well known in the market community of the financial services industry. See Stoxx AG v. Pandoro Golf S.L., WIPO Case No. D2002-0303 and Stoxx AG v.247 Holdings Group, WIPO Case No. D2012-1582 etc.. Fourthly, there is no evidence that the Respondent has been using the Disputed Domain Name in connection with a bona fide offering of goods and services as the Disputed Domain Name resolves to a parking site with sponsored links. The Complainant argues further in this regard that it is well established that where such links are based on trademark value, previous UDRP Panels have considered such practices generally as unfair use resulting in misleading diversion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.6. Further attention is drawn to the fact that the website is linked to various other affiliated sites offering services of finance and stock exchange and even offering links to non-related topics. Fifthly, the Complainant asserts that the Respondent's use of parking sites with pay-per-click links does not constitute a legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent is using the Complainant's trademark to attract Internet users to websites offering goods and services competing with those of the Complainant. Sixthly, the Respondent was neither authorized nor licensed by the Complainant to use the Complainant's trade name or trademark and there is no business relationship between the Complainant and the Respondent.
5.4 On the question of bad faith registration and use, the Complainant states that the Respondent having registered the Disputed Domain Name on September 9, 2014, must have been aware of the Complainant's prior rights at the time of registering the Disputed Domain Name. Secondly, it is argued that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name with the commercially important gTLD ". com". Thirdly, the Complainant refers to a considerable number of previous UDRP cases where the Respondent has registered domain names including foreign well known trademarks such as SWAROVSKI, NINE WEST, XENICAL and MORGAN STANLEY etc., to conclude that the Respondent's business model is to bulk-register domain names that have some trademark value to direct Internet traffic for commercial gain. The Complainant therefore asserts that the Respondent who has been involved in several previous UDRP cases failed to take any steps to avoid exploiting the Complainant's trademarks which leads the Complainant to conclude that the Respondent deliberately ignored or actively intended to exploit the value of the Complainant's trademarks. Fourthly, the Complainant submits just as other previous panels have done that the registration of disputed domain names which resolve to pay-per-click websites may be considered evidence of bad faith use regardless of whether it becomes apparent to the Internet user that the website is not necessarily connected to the trademark owner. Finally, the Complainant argues that a respondent who registers a domain name warrants that to his knowledge the registration of a domain name will not infringe upon or otherwise violate the rights of any third party nor is it being registered for an unlawful purpose, nor will he knowingly use the domain name in violation of any applicable laws and regulations. Accordingly, the Respondent ought to have been sensible when registering the Disputed Domain Name consisting of a well known trademark. The Respondent by registering and using the Disputed Domain Name as aforesaid, acted in disregard of third parties' rights and therefor in bad faith.
5.5 The Respondent did not reply to the Complainant's contentions within the time stipulated by the Rules.
6. Discussion and Findings
6.1 The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Respondent has registered and is using the Disputed Domain Name in bad faith.
A. Identical or Confusingly Similar
6.2 The Panel is satisfied that the Complainant has long owned intellectual property rights in the trademark EURO STOXX, a trademark well known all over the world in the financial services market including in India where the Respondent is supposedly based. The numerous trademark registration certificates attached to this proceeding attest to this uncontested fact. In addition, previous UDRP panel in cases such as Stoxx AG v. Pandoro Golf S.L., supra and Stoxx AG v. 247 Holdings Group, supra have held that the Complainant's trademarks have been: "generally known at least in the market community of financial services."The Panel accordingly finds that the Disputed Domain Name <eurostoxx.com> is confusingly similar to the Complainant's marks. The Panel also finds that the addition of the gTLD suffix ".com" to the Disputed Domain Name does not prevent a confusing similarity finding.
In the circumstances the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.3 The Panel finds that the Respondent has failed to produce any evidence that demonstrates that the Respondent has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. In addition, the Respondent has failed to demonstrate that it was licensed or authorized by the Complainant to use the Complainant's trade name or trademark nor that any business relationship between the Respondent and the Complainant exists. Accordingly, the Panel holds that the Respondent, before any notice of this dispute, did not use or prepare to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel further finds that as the Disputed Domain Name resolves to a website with sponsored links to other websites offering goods and services of the Complainant's competitors and/or hosts pay-per-click links, such usage cannot be described as a legitimate noncommercial or fair use of the Disputed Domain Name. See generally, the often-cited case, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. It is well established that in such cases once the Complainant establishes a prima facie case against the Respondent, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence proving that it has rights or legitimate interests in relation to the Disputed Domain Name — the Respondent has failed to discharge that burden in this instance. See the following cases namely, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 and PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.
In view of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.4 Turning to the question of bad faith registration and use, the Panel finds no difficulty in concluding that the Respondent registered the Disputed Domain Name in bad faith and continued with bad faith use considering the screenshots provided by the Complainant from the website "www.eurostoxx.com" of March 4, 2014. The Panel's conclusion in this regard is based further on a number of unrebutted factors as follows. In the first instance, the Panel finds it is inconceivable that the Respondent could not have been aware of the Complainant's rights in the STOXX and EURO STOXX trademarks, commencing from 1998, in numerous countries including India where the Respondent is domiciled, before opting to register the Disputed Domain Name. The numerous trademark registration certificates attached to this proceeding substantiates this point. Secondly, since the Respondent uses the Disputed Domain Name to divert Internet users to a website containing sponsored links to various goods and services offered in the financial services industry for commercial gain and/or to pay-per-click sites, as confirmed by the printouts provided by the Complainant, such conduct in itself is clear evidence of bad faith registration and use. Thirdly, the Complainant has drawn attention to a considerable number of previous UDRP decisions involving first, the Complainant's trademarks and second, the Respondent, whose business model appears to consist of the bulk registration of domain names that have trademark value with a view to diverting Internet users for commercial gain. The Panel therefore accepts the well founded Complainant's contention that the Respondent either deliberately ignored or actively intended to exploit the Complainant's trademarks in line with its established pattern of bad faith conduct. For the Respondent to have ignored all of these decisions dating back to 2002 is further evidence of bad faith registration and use. See for instance, amongst numerous others, a previous decision in Nine West Development Corporation v. Private Whois for Ninewestshoes.com/Comdot Internet Services Private Limited., WIPO Case No. D2007-1723 — a case concerning the domain name <ninewestshoes.com> and involving the Respondent herein. See also Stoxx AG v. Pandoro Golf S.L., supra, in relation to the domain name <golfstoxx.com>, Stoxx AG v. Rex Huang, WIPO Case No. D2008-1806 in relation to the domain name <stoxx.com>, Stoxx AG v. 247 Holdings Group, supra in relation to the domain name <stoxxoptions.com>; and Stoxx AG v. euro stoxx fund, WIPO Case No. D2015-03442 concerning the domain name <eurostoxx.org> to mention just a few of such previous UDRP decisions. Fourthly, the Panel has drawn adverse inferences from the Respondent's refusal and/or failure to respond to this Complaint.
The Panel is therefore satisfied that the Complainant has established the essential elements of paragraph 4(a)(iii) of the Policy.
7.1 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 <eurostoxx.com> be transferred to the Complainant.
Dated: May 18, 2015