WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Börse AG v. Iqbal Zafar / Domain Administrator, See PrivacyGuardian.org / WhoisGuard Protected, WhoisGuard, Inc. / Iqbal Zafar, FIX Tech / Host Pakistan, Syed Dilawar, Host Pakistan Online Department / 123-reg Limited, 123-reg Limited

Case No. D2018-1757

1. The Parties

The Complainant is Deutsche Börse AG of Eschborn, Germany, represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Germany.

The Respondent is Iqbal Zafar of Sialkot, Pakistan / Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Iqbal Zafar, FIX Tech of Sialkot, Pakistan / WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Host Pakistan, Syed Dilawar, Host Pakistan Online Department of Karachi, Pakistan / 123-reg Limited, 123-reg Limited of Hayes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrars

The disputed domain names <eurexbondsgmbh.com> and <eurexexchange.ltd> are registered with NameCheap, Inc.

The disputed domain name, <eurex-exchange.com> is registered with NameSilo, LLC.

The disputed domain name <eurexmarkets.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

The disputed domain name <eurex.me> is registered with Mesh Digital Limited.

The Registrars will hereinafter collectively referred to as the “Registrar”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 2 and 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2018, 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 August 10, 2018.

The Center verified that the Complaint together with 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, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on September 11, 2018. 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.

For convenience, where relevant the Panel will refer to each of the disputed domain names in this proceeding as follows:

<eurexmarkets.com>: disputed domain name No. 1

<eurexexchange.ltd>: disputed domain name No. 2

<eurex-exchange.com>: disputed domain name No. 3

<eurexbondsgmbh.com>: disputed domain name No. 4

<eurex.me>: disputed domain name No. 5

4. Consolidation of Proceedings

The Complainant seeks to consolidate the proceedings in respect of the five disputed domain names and refers in this regard to the criteria discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Those criteria are addressed to the questions of whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties, also taking account of procedural efficiency.

In this case, the Complainant submits and provides evidence of the following:

(a) that disputed domain names No.1, No.2 and No.4 have the same registrant, namely Zafar Iqbal, that Mr Iqbal was an earlier registrant of disputed domain name No.3, and that Mr Iqbal is a former director of the company that operates the website to which disputed domain name No.5 resolves;

(b) that disputed domain names No.1, No. 3, No. 4 and No. 5 have an identical IP address;

(c) that the layout of each of the websites to which disputed domain names No.1, No.3 and No.5 resolve is identical (save that the language of the last of these websites is Arabic);

(d) that the websites to which disputed domain names No.1, No.3, No.4, and No.5 resolve all refer to an entity named Eurex Multi Assets Exchange Limited (a dissolved United Kingdom company), and that disputed domain name No.2 reflects the names of a shareholder in that entity, namely Eurex Exchange Limited; and

(e) that there is a commonality of naming, in that each of disputed domain names comprises the Complainant’s trademark EUREX (see below) together with a term descriptive of the Complainant’s activities, save for disputed domain name No.5, which comprises the Complainant’s trademark alone.

In the view of the Panel, the Complainant’s submissions above give rise to a persuasive case for the consolidation of the proceedings in respect of all five of the disputed domain names. Noting also that none of the registrants has made any objection to consolidation, the Panel directs that the proceedings be consolidated accordingly.

5. Factual Background

The Complainant is a company headquartered in Germany. It is a provider of financial services, including marketplaces for the trading of shares and other securities worldwide. It operates a number of services under the name and trademark EUREX and is the owner of various trademark registrations for that mark, including the following:

- European Union Trade Mark number 744763 for the word mark EUREX, registered on June 8, 1999, for goods and services in various in classes, including stock exchange services in Class 36;

- International trademark number 812147 for the word mark EUREX, registered on July 28, 2003 for goods and services in various classes, including services of a stock exchange in Class 36.

The disputed domain names were registered on the following dates:

Disputed domain name No.1 on February 5, 2016;

disputed domain name No.2 on August 21, 2017;

disputed domain name No.3 on February 19, 2017;

disputed domain name No.4 on October 6, 2017;

disputed domain name No.5 on October 29, 2015.

According to evidence produced by the Complainant:

On March 19, 2018, disputed domain name No.1 resolved to a website headed “Eurex Multi-Asset Exchange Limited Registered in United Kingdom” and “Trade at Eurex” which appeared to offer financial trading services including foreign exchange, futures and commodities.

On June 6, 2018, disputed domain name No.2 did not appear to resolve to any active website.

On April 5, 2018, disputed domain name No.3 resolved to a similar website as disputed domain name No.1.

On June 6, 2018, disputed domain name No.4 did not appear to resolve to any active website.

On a date unknown, disputed domain name No.5 resolved to a similar website as disputed domain name No.1, save that the words “Trade at Eurex” appeared in Arabic as did certain other headings on the relevant page.

6. Parties’ Contentions

A. Complainant

The Complainant states that it is a leading provider of financial and transaction services with over 5,000 employees in Europe and the United States and customers worldwide. It states that it organizes one of the world’s largest derivative markets under the name and mark EUREX, which it has used since 1998 and which forms an integral part of the global derivatives market. The Complainant refers to various group companies including Eurex Exchange, Eurex Clearing, and Eurex Bonds and provides further evidence describing its business and awards and prizes that it has obtained.

The Complainant submits that each of the disputed domain names is identical or confusingly similar to its EUREX trademark. It states that each of the disputed domain names includes that mark in its entirety. It contends that in the cases of disputed domain names No.1, No.2 and No.3, the mark is combined with a descriptive term which relates to the services for which the Complainant’s trademark is registered; in the case of disputed domain name No.4 the disputed domain name is identical to the name of the Complainant’s subsidiary company, Eurex Bonds GmbH; and in the case of disputed domain name No.5 the disputed domain name is identical to the Complainant’s mark, save for the country code Top-Level Domain (“ccTLD”) “.me”, which is to be disregarded for the purposes of comparison.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. It states that the Respondent is not affiliated with the Complainant and has never been authorized to use the Complainant’s EUREX trademark. Further, the Complainant contends that the Respondent is using the disputed domain names dishonestly. It alleges in particular:

(a) that the Respondent has listed Mr. Heuer as a Director of its company, Eurex Multi Assets Exchange Limited, while Mr. Heuer is in fact a former Director of the Complainant’s subsidiary Eurex Bonds GmbH and has no connection with the Respondent or its company;

(b) that on the website to which disputed domain name No.4 resolves, the Respondent has included an address for its company that is in fact a former address of the Complainant and its subsidiary Eurex Bonds GbmH;

(c) that while the Respondent purports to trade as Eurex Bonds GmbH and states that that company is regulated by the United Kingdom Financial Conduct Authority, the Respondent’s company is in fact Eurex Bonds GmbH Limited and is not so regulated; and

(d) that the statement “Eurex Multi Assets Exchange Ltd is regulated in the United Kingdom”, which appears on the active websites to which the disputed domain names resolve, is also incorrect.

In the circumstances, the Complainant contends that there is no use or demonstrable preparation to use any of the disputed domain names in connection with a bona fide offering of goods or services. The Complainant submits that, on the contrary, the Respondent is attempting to benefit from the Complainant’s reputation as a trustworthy provider of financial services by choosing misleading domain names, creating a maze of legal entities using the Complainant’s trademark EUREX, and falsely creating the impression of a connection between the disputed domain names and the Complainant.

The Complainant submits that each of the disputed domain names has been registered and is being used in bad faith. Based on its factual allegations referred to above, the Complainant states, that by registering and using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a deliberate likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of product or service on the Respondent’s websites (paragraph 4(b)(iv) of the Policy).

The Complainant requests the transfer of all of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even though no Response has been filed in this case, the Complainant must still demonstrate to the satisfaction of the Panel that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights for the mark EUREX. The Panel also accepts the evidence of the Complainant that its mark EUREX is widely known in connection with financial services. All of the disputed domain names incorporate the Complainant’s mark EUREX in its entirety. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.

Disputed domain names No.1, No.2, No.3 and No.4 combine that mark with dictionary or descriptive terms which, in the view of the Panel, do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark. Disputed domain name No.5 is identical to the Complainant’s mark EUREX save for the ccTLD “.me”, which the Complainant rightly states is to be disregarded for the purposes of comparison. In the circumstances, the Panel finds that each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of any of the disputed domain names. However the Respondent has failed to participate in this proceeding and has not therefore provided any answer to the Complainant’s case or demonstrated any basis for a finding of rights or legitimate interests, whether in the circumstances set out in paragraph 4(c) of the Policy or otherwise.

While the Respondent purports to operate websites offering financial services under the names “Eurex Multi-Asset Exchange” and “Eurex”, the Panel accepts the Complainant’s evidence, which the Respondent has not contradicted, that the Respondent has made misleading representations on or in connection with those websites which are liable to lead Internet users wrongly to believe that they are in some manner associated with the Complainant. Furthermore, the Panel finds that each of the disputed domain names is inherently misleading and constitutes an impersonation of the Complainant, in that four of the disputed domain names adopt the Complainant’s mark EUREX in conjunction with a term or terms related to financial services and the remaining name comprises an unadorned use of the Complainant’s trademark.

The Panel concludes in the circumstances that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

C. Registered and Used in Bad Faith

Based on the Panel’s findings of fact referred to above, the Panel concludes that the Respondent registered and has used each of the disputed domain names in the knowledge of the Complainant’s trademark EUREX and its reputation in the area of financial services and with the intention of misleading Internet users into believing that the disputed domain names and related websites were operated or authorized by the Complainant. Specifically, the Panel finds that, by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites or of a product or service on its websites (paragraph 4(b)(iv) of the Policy). With regards to disputed domain names No. 2 and 4, which do not appear to resolve to any active website, the Panel finds that under the totality of the circumstances, including the Respondent’s pattern of abusive behavior, their registration and use has also been in bad faith for purposes of the Policy. The Panel therefore finds that each of the disputed domain names has been registered and is being used in bad faith.

8. Decision

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 names, <eurexmarkets.com>, <eurexexchange.ltd>,
<eurex-exchange.com>, <eurexbondsgmbh.com>, and <eurex.me> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: September 13, 2018