WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Depository Trust & Clearing Corporation v. Name Redacted
Case No. D2018-1884
1. The Parties
The Complainant is The Depository Trust & Clearing Corporation of New York, New York, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <dtccglobal.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 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 22, 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 24, 2018.
By email dated September 4, 2018, an entity named as Respondent in the Complaint notified the Center that its name has been used by the true registrant in the registration details to disguise its identity. The entity claimed that it had no involvement with or knowledge of registration of the disputed domain name and requested that the references to its name and address be removed from the registration details.
In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on September 20, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant is one of the world’s leading providers of post-trade services to the global financial community, including clearing, settlement and institutional trade processing services.
The Complainant processes over 100 million financial transactions daily and provides post-trade services to thousands of broker/dealers, banks and asset managers worldwide, all under the trademark DTCC, its major asset and an important symbol of its reputation and goodwill in the global financial sector.
The large portfolio of the Complainant’s DTCC trademarks registrations include among others:
- United States Trademark Registration No. 5309424 for the mark DTCC, registered on October 17, 2017 for goods and services of Classes 9, 35, 36, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”);
- European Union Trademark (hereinafter: “EUTM”) Registration No. 016190035 for the mark DTCC, registered on August 9, 2017 for services of Classes 35, 38 and 42 of the Nice Classification; and
- United Kingdom (hereinafter: “UK”) Trademark Registration No. 00003203369 for the mark DTCC, registered on December 20, 2016 for goods and services of Classes 9, 35, 36, 38, 41 and 42 of the Nice Classification.
The disputed domain name was registered on July 16, 2018.
For a short time period following registration it was used by the Respondent to automatically redirect traffic from the disputed domain name to the “www.globalcollateral.net” website owned and used by a joint venture of which the Complainant owns 50%.
As of August 10, 2018 the disputed domain is linked to the Registrar website which indicates the “This domain name is pending ICANN verification”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <dtccglobal.com> is confusingly similar to its DTCC trademark since it reproduces the trademark in its entirety and addition of the generic word “global” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated its DTCC trademark in the disputed domain name with obvious intent to capitalize on the reputation of it by diverting Internet users seeking information about the Complainant, which evidences knowledge of its DTCC trademark and the Respondent’s bad faith.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
On September 4, 2018 the Center received an email communication from the entity listed as the organization of the Respondent, claiming that they have not been involved in any capacity with the registration of the disputed domain name and that all data related to them have most likely been used by the true registrant to disguise its identity. This organization requested that all such related references be removed from the record.
The Panel will address and discuss circumstances surrounding the alleged identity fraud in relation to registration of the disputed domain name in Section 6.C of this decision.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that he has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark DTCC, and for the purpose of this proceeding the Panel establishes that the Complainant’s United States Trademark Registration No. 5309424, EUTM Registration No. 016190035 and the UK Trademark Registration No. 00003203369 for the word mark DTCC satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the DTCC mark, the Panel next assessed whether the disputed domain name <dtccglobal.com> is identical or confusingly similar to the DTCC trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically 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.”
According to section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
According to section 1.11.1 of the WIPO Overview 3.0, “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
The disputed domain name incorporates the Complainant’s DTCC trademark in its entirety.
The only element in the disputed domain name that differ from the distinctive DTCC trademark of the Complainant is the addition of the dictionary word “global”, which is not sufficient to prevent finding of confusing similarity under the first element of the Policy.
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should in relation to this administrative proceeding be disregarded.
On the basis of facts and circumstances discussed above the Panel finds that the disputed domain name <dtccglobal.com> is confusingly similar to the DTCC trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that he holds well‑established prior rights in the trademark DTCC.
The Complainant has never authorized the Respondent to use its DTCC trademark in any way, and the Complainant’s prior rights in the DTCC trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The widely-known DTCC trademark of the Complainant has no dictionary meaning; it’s a term invented by the Complainant and therefore distinctive for the corresponding services.
According to section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
For a short time period following registration the disputed domain name was used by to automatically redirect traffic for the disputed domain name to “www.globalcollateral.net”, a website owned and used by a joint venture of which the Complainant owns 50%. It is reasonable to infer that the Respondent knew of the Complainant and its DTCC mark when registering the disputed domain name which is indicia of bad faith registration.
Following receipt of the Center’s written notice of this administrative proceeding the organization listed in the WhoIs as that of the registrant of the disputed domain name notified the Center in writing that it is not their entity and that the disputed domain name was registered without their knowledge.
UDRP panels have been consistent that concealment of the registrant identity and provision of false contact information is evidence of not only bad faith registration but also bad faith use.
As a result, and applying the above noted UDRP panels’ principles the Panel finds that the disputed domain name has been registered and is being used in bad faith and the paragraph 4(a)(iii) of the Policy is satisfied.
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 <dtccglobal.com> be transferred to the Complainant.
Date: October 2, 2018
1 In all likelihood, the Respondent used false name and contact information when registering the disputed domain name. In light of this potential identity fraud, the Panel has decided to redact the Respondent’s name and contact information from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.