WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euroclear SA/NV v. Marilyn Steele
Case No. D2017-2172
1. The Parties
The Complainant is Euroclear SA/NV of Brussels, Belgium, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Marilyn Steele of Humboldt, Tennessee, United States of America.
2. The Domain Name and Registrar
The disputed domain name <euroclearpt.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2017 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 amended Complaint on November 9, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Russian. On November 8, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not comment on the language of the proceeding.
The Center verified that the amended 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 Respondent of the Complaint in both English and Russian and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on December 13, 2017. 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 Belgium-based financial services company that specializes in post trading services such as the settlement of securities transactions as well as the safekeeping and asset servicing of these securities. The Complainant owns, among others, the following trademark registrations:
- EUROCLEAR POST-TRADE MADE EASY (design and word), U.S. trademark registration number 4174217, registered on July 17, 2012;
- EUROCLEAR (word), U.S. trademark registration number 4698320, registered on March 10, 2015;
- EUROCLEAR (word), U.S. trademark registration number 087446, registered on August 5, 1969.
The Complainant also owns several domain names, incorporating its EUROCLEAR trademark, such as <euroclear.com>, which was registered on August 7, 1995 and directs to the “www.euroclear.com” website.
The Respondent registered the Domain Name on September 6, 2017. The Domain Name used to direct to a website in English. The “home” page of the “www.euroclearpt.com” website used to display the Complainant’s word and design trademark EUROCLEAR POST-TRADE MADE EASY, like the Complainant’s “www.euroclear.com” website does. The Respondent’s website replicated look and feel of the Complainant’s website. Sometime after November 1, 2017, the Respondent deactivated its “www.euroclearpt.com” website.
On October 10, 2017, the Complainant sent cease and desist letter to the Respondent informing it about the Complainant’s trademark rights in the EUROCLEAR marks, the Respondent’s infringement of the EUROCLEAR marks and requested transfer of the Domain Name to the Complainant. The Respondent did not reply to the cease and desist letter. On October 19, 2017, the Complainant sent another letter to the Respondent requesting a reply to its cease and desist letter, but the Respondent did not respond to that letter either.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s trademark. The Complainant relies on several of its EUROCLEAR trademark registrations to support its standing. The Complainant submits that the Domain Name is confusingly similar to the EUROCLEAR trademark, as it incorporates the EUROCLEAR word trademark in the prefix of the Domain Name, together with two letters, “pt”. The Complainant contends that the addition of the letters “pt” does not substantially alter the overall impression of the Domain Name in the eyes of an unsuspecting Internet user and in fact, further adds to the confusion, as the Complainant is known for offering post-trade services. The Complainant claims that the generic top-level (“gTLD”) suffix in the Domain Name (“.com”) should be disregarded since it is a technical requirement of registration of the Domain Name and does not serve to distinguish the Domain Name from other domain names.
The Complainant submits that the Respondent lacks rights and legitimate interests in the Domain Name. The Complainant argues that the Respondent does not hold any rights by way of trademark registrations or common law rights in and to the terms EUROCLEAR or EUROCLEARPT. The Complainant contends that the Domain Name currently resolves to a replica version of the Complainant’s website, “www.euroclear.com”, which features the Complainant’s EUROCLEAR trademark, the EUROCLEAR logo and information about the company, meaning that the overall look and feel of the website, points towards the Complainant’s business. The Complainant claims that the Respondent’s website further enables users to register at a “MyEuroclear” portal, whereby customers intending to use the Complainant’s services, risk disclosing personal information, such as names, postal addresses, ID numbers and other sensitive information. In the Complainant’s opinion, the Respondent replicated the Complainant’s website, in order to mislead the Complainant’s customers to the Respondent’s own website.
The Complainant alleges that the Respondent is not commonly known by the name “Euroclear” or “Euroclearpt” and has never been given permission by the Complainant to use its trademark in domain names, or for any other purpose. The Complainant argues that the only reason why the Respondent registered the Domain Name, was to take advantage of the Complainant’s well-known EUROCLEAR brand. The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the Respondent uses the Domain Name to give the impression that it is or at the very least, is associated with the Complainant.
The Complainant claims that the Respondent both registered and used the Domain Name in bad faith. The Complainant alleges that its EUROCLEAR trademark has acquired widespread recognition in relation to post-trade services and has several trademarks, which predate the registration of the Domain Name. The Complainant contends that the Respondent is and was aware of the Complainant’s rights in and to the EUROCLEAR trademark, as the EUROCLEAR logo and company information were displayed on the website associated with the Domain Name. The Complainant argues that the addition of the letters “pt” next to the EUROCLEAR trademark in the Domain Name is also evidence of bad faith because the Respondent has chosen to register the Domain Name that is associated with the Complainant’s post-trade services. Furthermore, the Complainant claims that Respondent’s failure to counter the allegations of the Complainant’s October 10, 2017 cease and desist letter, which was followed by the October 19, 2017 reminder, amounts to an adoptive admission of the allegations. The Complainant alleges that the Respondent’s intentional replication of the Complainant’s “www.euroclear.com” website an indication of bad faith use, because the Respondent’s main motive is to deceive users into thinking that the Domain Name is some way associated with the rights holder and that the goods and/or services offered are legitimate. Finally, the Complainant contends that the Respondent has a propensity to engage in fraudulent activity, which only supports a finding of bad faith intent in this matter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the proceeding
“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.” 1 The default language of this administrative proceeding is Russian since it is the language of the Registration Agreement for the Domain Name. However, the Complainant filed the Complaint in English and requested English to be the language of this proceeding. The Respondent did not comment on the language of the proceeding.
The Rules allow the UDRP panel to determine language of the administrative proceeding having regard to the circumstances of the case in the spirit of fairness to the parties and taking into account time and cost of the proceeding.2 Where it appears the parties reasonably understand the nature of the proceedings and the panel can understand both the language of the complaint and one of the respondent’s submissions, prior UDRP panels found it to be fair to the parties to conduct the proceeding in the language other than the language of the registration agreement.
In this case the Panel is proficient in both Russian and English. The Panel finds that the circumstances of this case indicate that the Respondent may be capable of understanding English because the Respondent registered the Domain Name consisting of English words in Latin script and the Domain Name directed to a website in English.
Specifically, the Respondent combined the English words “euro”, “clear” with the letters “pt3 ” in the Domain Name. The Domain Name has no meaning in Russian.
Also, when script of the domain name is different from the respondent’s native language, it may indicate that the respondent is familiar with the languages other than their native language. 4 Here, the Respondent chose Latin letters rather than Cyrillic letters for the composition of the Domain Name.
Finally, the Complainant submitted evidence showing that as of November 1, 2017, all of the content of the Respondent’s website associated with the Domain Name was in English. The Respondent has deactivated her website.
In light of the Respondent’s ability to understand English and her decision to deactivate the website associated with the Domain Name following commencement of this proceeding without an attempt to rebut the Complainant’s allegations, it would not be fair or equitable to require the Complainant to go to the unnecessary time and expense of translating its pleadings into another language.
The Panel, therefore, finds that English is the appropriate language of this proceeding because it will encourage fair and expeditious resolution of this dispute. Eliminating translation of the Complaint to Russian in the situation where the Respondent understands English will conserve resources of the Parties.
6.2. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must demonstrate that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the EUROCLEAR trademark by submitting copies of trademark registrations for the EUROCLEAR trademarks in various countries. It is well-established that “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”5
The test for confusing similarity between the Domain Name and the Complainants’ trademarks “involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”6 “Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”7 “The applicable Top Level Domain (‘TLD’) in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”8
Here, the Domain Name consists of the EUROCLEAR trademark, an abbreviation “pt” and the gTLD suffix “.com”. Because the Domain Name incorporates the Complainant’s EUROCLEAR trademark in its entirety, the Domain Name is confusingly similar to the Complainant’s trademark. The addition of the suffix “pt” does not impact the assessment of the confusing similarity. 9 The gTLD suffix is disregarded under the confusing similarity test. 10
Thus, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark and the Complainant satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.11 Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.12 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.13
The Complainant claims that the Respondent does not hold any “rights” by way of trademarks or common law rights in and to the term “EUROCLEAR” or “EUROCLEARPT”. The Complainant alleges that it has never been given permission by the Complainant to use its trademark in domain names, or for any other purpose. It is well-established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
Furthermore, the record shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The evidence on file shows that the Domain Name used to resolve to a replica version of the Complainant’s website. The Respondent’s “www.euroclearpt.com” website used to display the Complainant’s word and design EUROCLEAR trademark and mirror the Complainant’s website layout to create an impression of association or affiliation with the Complainant. The record shows a lack of any disclosures regarding the Respondent’s relationship with the Complainant. Such use of the Domain Name did not create any rights or legitimate interests in the Domain Name for the Respondent because the Respondent’s website was designed to create an impression of the Complainant’s business instead of the Respondent’s business. The only apparent reason for the Respondent’s Domain Name registration, appears to be taking advantage of the Complainant’s EUROCLEAR trademark.
The Complainant alleges that the Respondent is not commonly known by the name EUROCLEAR or EUROCLEARPT. The Respondent’s personal name is Marilyn Steele, which is different from the Domain Name. In addition, because the Respondent used privacy shield to conceal her identity, the Respondent cannot have been commonly known by the Domain Name. Respondent’s use of a WhoIs privacy service indicates that Respondent specifically did not want to reveal the name by which it is commonly known. See, L'Oréal SA v. PrivacyProtect.org / WangShanShan, WIPO Case No. D2014-0295 (“there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name.”)
The Respondent’s deactivation of the “www.euroclearpt.com” website is another confirmation that she lacks rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that the Complainant established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the UDRP has been established.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith because at the time of the Domain Name registration the Respondent was aware of the Complainant, its business and its EUROCLEAR trademarks. The evidence on the file shows the Complainant’s first trademark registration predates the Domain Name registration by at least 49 years. The Respondent used the Domain Name to resolve to the website with design identical to the design of the Complainant’s website. The Respondent’s website also used to display the Complainant’s word and design trademark “EUROCLEAR POST-TRADE MADE EASY”.
At the time of drafting the decision, the Respondent’s website had been deactivated. However, the Complainant has provided evidence showing that the Domain Name was pointed, prior to the filing of the Complaint, to the website with the content similar to that of the Complainant’s with the layout identical to that of the Complainant’s. This indicates that the Respondent tried to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location for commercial gain as per paragraph 4(b)(iv) of the Policy.
Although currently the website associated with the Domain Name is deactivated, it does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”.14 One of the factors applied to passive holding doctrine is “the implausibility of any good faith use to which the domain name may be put”.15 Here, the previous bad faith use of the Domain Name and lack of any explanation of possible good faith use from the Respondent make any good faith use of the Domain Name implausible.
The Panel also finds that the cumulative circumstances of the case indicate that the Respondent registered and is using the Domain Name in bad faith. The Respondent appears to have provided false contact information on the WhoIs database associated with the Domain Name, as evidenced by the non-delivery report issued on November 17, 2017, whereby the courier company informed the Center that “[t]he address on the airway bill is incomplete / wrong”. Also, the Respondent's ignoring of the Complainant’s cease-and-desist letters is considered an indication of bad faith.
All these factors cumulatively produce an overwhelming inference of bad faith registration and use and therefore the third element of the UDRP has been proved.
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 <euroclearpt.com> be transferred to the Complainant.
Date: December 26, 2017
1 Paragraph 11(a) of the Rules.
3 According to the Complainant, “pt” stands for Post-trade”.