WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IG Group Limited v. Michael Smith / Domain Privacy Service FBO Registrant
Case No. D2016-0127
1. The Parties
The Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“US”).
The Respondents are Michael Smith of London, UK and Domain Privacy Service FBO Registrant of Burlington, Massachusetts, US.
2. The Domain Names and Registrar
The disputed domain names <igtrades.biz>; <igtrades.info>; <igtrades.net>; <igtrades.org> (the “Domain Names”) are registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2016, naming the second Respondent only. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 21, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the contact information of the second Respondent specified in the Complaint; that is, the underlying registrant of the Domain Names was identified to be the first Respondent. The Center sent an email communication to the Complainant on January 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 28, 2016, adding the first Respondent.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 22, 2016.
The Center appointed William P. Knight as the sole panelist in this matter on February 29, 2016. 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 “financial spread betting firm”, providing services whereby financial markets traders can bet on movements of commodity, currency and share markets by a number of means. Based in London, UK, it has been in this business since 1974.
The Complainant owns numerous trade mark registrations comprising and/or consisting of IG. The Complainant has registered IG as a Community Trade Mark with registration no. 001895069 and registration date March 24, 2003.
Originally protected by a privacy service, which is the second Respondent, the first Respondent was identified through the proceedings as an individual with a residence in London, UK, also.
Each of the Domain Names was registered on September 22, 2014.
The <igtrades.net> resolves to a website in connection with financial services. The remaining three Domain Names do not resolve to any active website.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the Domain Names are confusingly similar to the Complainant’s registered trade marks;
(ii) that the Respondent has neither rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
In support of (i), the Complainant relies on a number of registered trade marks which incorporate the capital letters “IG”. The Complainant says that these trade marks enjoy a significant reputation in the UK and elsewhere and are well-known amongst market traders in many countries. It has been providing its services using the Internet since 1998, using the domain name <igindex.co.uk>. It also uses the domain names <igmarkets.co.uk>, <iggroup.com> and <ig.com>.
The Complainant says that the letters “IG” in conjunction with the word “trades”, a word closely related to its business, in each of the Domain Names renders them confusingly similar to these registered trade marks. It says that the use of the word “trades” does nothing to dispel the confusing similarity with its trade marks and, in fact, intensifies the misleading connection with the Complainant.
In support of (ii), the Complainant asserts, upon information and belief, that the first Respondent has never used, or made preparations to use, the Domain Names or any name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
The Complainant refers to the decision in IG Group Limited v. Michael Smith / Domain Privacy Service FBO Registrant, WIPO Case No. D2015-1723, in which it was found that the domain name <igtrades.com>, registered on the same day by the first Respondent, was confusingly similar to the Complainant’s trade marks, that the Respondent had no rights or legitimate interests in the domain name in that case and that that domain had been registered and was being used in bad faith. The Complainant puts in evidence that, in that case, the domain name in dispute was being used in connection with a website that displayed a sign clearly intended to look like the Complainant’s principal trade marks and the site was purporting to offer financial services similar to those of the Complainant – in short, in that case the Respondent was using the disputed domain name to masquerade as the Complainant.
In the case of one of the Domain Names, <igtrades.net>, this is used in conjunction with a website which appears to be substantially identical to that which was the subject of the earlier case between the parties.
As for the other Domain Names, even though they are not in use, the Complainant asserts that their registration and passive holding, in light of the first Respondent’s prior conduct and present use of <igtrades.net>, is such as to amount to registration and use in bad faith within the meaning of the Policy, citing Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp, WIPO Case No. D2010-1063 (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Complainant also asserts that the appearance of the first Respondent on the WHOIS register after the commencement of these proceedings was “cyber-flight” and, thereby, further evidence of registration and use in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the first Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The first Respondent cannot be in a better position by failing to respond to explain the registration and use of the Domain Names.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondents, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the first Respondent.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in its IG trade marks evidenced by its trade mark registrations referenced above.
The Panel is also satisfied that each of the Domain Names is confusingly similar to the Complainant’s IG trade mark in that the dominant component of each of the Domain Names are the letters “ig” and the addition of the suffix “trades” which is a clear reference to the nature of the Complainant’s business.
The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s IG trade marks and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Each of the Domain Names was registered on September 22, 2014, long after the Complainant had established its business and registered its first IG trade mark, and it is apparent from the evidence that the first Respondent registered each of the Domain Names specifically with the Complainant and its reputation in mind. The Complainant has indicated that the first Respondent is not affiliated with the Complainant in any way, is not licensed to use the Complainant’s marks, is not commonly known by the Domain Names and is not using them for a bona fide offering of goods or services. The fact that the first Respondent’s name and his use of the Domain Names, in particular <igtrades.net> shows no legitimate connection of any kind with the words “IG” is sufficient to put the onus on him to explain his choice.
In the absence of any response from the first Respondent, the Panel concludes that the Complainant has discharged the burden of establishing that the first Respondent has no rights or legitimate interests in any of the Domain Names and that paragraph 4(a)(ii) of the Policy has therefore been satisfied.
C. Registered or Used in Bad Faith
The conduct of the first Respondent, as demonstrated by the earlier proceeding between the parties, the fact that the first Respondent has registered four Domain Names with different generic Top-Level Domains (“gTLDs”) all with the terms “igtrades”, and the first Respondent’s current use of the Domain Name <igtrades.net> which shows a similar look and feel to the Complainant’s website amply demonstrates that each of the Domain Names was registered in bad faith with the knowledge of the Complainant’s IG trade mark rights.
Further, the Respondent operates a website connected to <igtrades.net> for financial services including verbatim text from the Complainant’s website and displaying a logo similar to the Complainant’s trade mark, giving appearance of false association with the Complainant. Such use falls squarely within paragraph 4(b)(iv) of the Policy.
In the case of the Domain Names not in use, taking into account all the circumstances of the present proceeding, the reasons given, and on the authorities cited by the Complainant, the Panel finds that the passive holding of the remaining three Domain Names is also use in bad faith.
While the Complainant characterizes the change in registrant information from the privacy service to the first Respondent after filing of the Complaint as “cyber-flight”, suggesting further evidence of bad faith, the Panel disagrees with such characterization and notes that the change was the result of the Registrar’s disclosure of the underlying registrant behind the privacy shield in relation to the present proceeding.
The Panel therefore concludes that the first Respondent registered and is using each of the Domain Names in bad faith in the sense required by the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <igtrades.biz>; <igtrades.info>; <igtrades.net>; and <igtrades.org>, be transferred to the Complainant.
William P. Knight
Date: March 10, 2016