WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IMC B.V. v. Withheld for Privacy Purposes / Ted Coders, TedCoders and frank hilary

Case No. D2021-1252

1. The Parties

Complainant is IMC B.V., Netherlands, represented by DLA Piper US LLP, United States of America (“United States”).

Respondents are Withheld for Privacy Purposes, Iceland / Ted Coders, TedCoders, Nigeria and frank hilary, United States.

2. The Domain Names and Registrar

The disputed domain names <imc-financial.com> and <imc-financialmarket.com> (“Domain Name”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 28, 2021.

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 Respondent of the Complaint, and the proceedings commenced on May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on July 6, 2021. 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. Procedural issue: Complaint filed against Multiple Respondents / Consolidation

The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at 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. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

In this case, the Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation:

- both Domain Names are registered through the same registrar;
- Domain Names share the same naming pattern, namely they reproduce the trademark IMC of Complainant, in combination with a hyphen “-”, the word “financial” and the generic Top-Level Domain (gTLD) “.com” and only differ in the additional term “market” in one of the Domain Names;
- both Domain Names have been used to create fake websites of Complainant;
- the second Domain Name <imc-financial.com> was registered shortly after Complainant sent a letter to the hosting company to disable the website under the first Domain Name <imc-financialmarket.com>; and
- both Domain Names lead to websites the owners of which claimed to be a business at the same address as a member of Complainant’s group.

Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent, providing fake ID details. Furthermore, named Respondents did not submit any arguments to rebut this inference.

The Panel finds therefore that consolidation is fair to both Parties, as Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint but have chosen not to respond (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).

5. Factual Background

Complainant is a global market maker, which, through its trading affiliates, buys and sells securities in all major asset classes on multiple trading venues worldwide. Complainant’s trading subsidiary IMC Chicago, LLC d/b/a IMC Financial Markets has its principal place of business in Chicago, Illinois, United States.

Complainant was founded in 1989 and has grown internationally with offices in Amsterdam, United States, Australia and Hong Kong, China. It provides its services under the IMC marks also through its website at “www.imc.com“. Per Complaint, Complainant’s services are advertised and promoted extensively, including, but not limited to, on the Internet and through social media platforms, such as YouTube and Facebook. Complainant has received numerous awards and honors, including Lead Market Maker in over 500 option classes, Lead Market Maker in over 150 ETFs and Hong Kong Index 2020 Top Three Active Traders in Options, Top Three Active Traders in Options – After-Hours Trading, Top Three Market. In the state of Illinois, Complainant has registered the corporate name “IMC Financial Markets” as its assumed name.

Complainant owns several trademark registrations for IMC, including:

- European Union trademark registration No. 010417822, IMC financial markets & asset management (fig.), filed on November 15, 2011 and registered on March 27, 2012 for services in international class 36;
- European Union trademark registration No. 013380431, IMC (fig.), filed on October 20, 2014 and registered on March 16, 2015 for services in international class 36; and
- International trademark registration no. 1491138, IMC (fig.), registered on July 23, 2019, for services in international class 36.

The first Domain Name <imc-financialmarket.com> was registered on October 20, 2020 and the second Domain Name <imc-financial.com> was registered on March 12, 2021. The first Domain Name <imc‑financialmarket.com> used to lead to a website (the First Website) that purported to appear as though it was Complainant’s official website. It incorporated text and other materials which were copied from Complainant’s website and depicted contact information which was identical to Complainant’s contact information. Complainant sent a letter to the hosting company, requesting that it disables the said website, on February 17, 2021. The hosting company disabled the First Website, which was disabled at least on March 16, 2021 and remains disabled. Shortly after the letter was sent, the second Domain Name <imc-financial.com> was registered. The <imc-financial.com> Domain Name, just like the <imc-financialmarket.com> Domain Name, leads to a website (the Second Website), which is intended to appear as though it is the official website of Complainant. The Second Website claims that the owner company provides financial services and purports to have the same postal address of Complainant, namely 233 South Wacker Drive, Suite 4300, Chicago Illinois 60606, USA. On April 1, 2021, Complainant sent a letter to the email address appearing on the Second Website, requesting that the owner cease using Complainant’s marks and transfer the Domain Name to Complainant, to which there was no response.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the IMC trademark.

The Panel finds that the Domain Names are confusingly similar to the IMC trademark.

The Domain Names incorporate the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the hyphen “-” in the Domain Names, along with the words “financial” and “market” respectively do not prevent a finding of confusing similarity, as the IMC trademark remains clearly recognizable (WIPO Overview 3.0, section 1.8).

The gTLD “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names are confusingly similar to the IMC trademark.

Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

There is no evidence that Respondent has been commonly known by the Domain Names.

To the contrary, it registered and was using them for the purpose of making illegitimate use of Complainant’s marks by misleading Internet users (Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; WIPO Overview 3.0, sections 2.5.2, 2.5.3).

This also in view of the fact that the second Domain Name was registered subsequent to the first Domain Name and to the use Respondent made of it as described above, indicating that Respondent systematically registered domain names that infringe trademarks of Complainant, a factor that further supports the finding of lack of legitimate interest (WIPO Overview 3.0, sections 2.5.2, 2.5.3).

In addition, the Panel notes the nature of the Domain Names (which are almost identical to Complainant’s registered assumed name in the state of Illinois “IMC Financial Markets” and the IMC trademark) and finds that such composition carries a risk of implied affiliation with Complainant.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the IMC trademark had been used and registered at the time of the Domain Names registration by Respondent, and noting the composition of the Domain Names, the Panel finds that Respondent had Complainant’s trademark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the IMC trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

As regards bad faith use, the fact that the Domain Names were used for the creation of websites, that mimicked Complainant’s sites, is a clear indication that they were being used in bad faith (Sydbank A/S v. Syd Bank, WIPO Case No. D2015-0324; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488; WIPO Overview 3.0, section 3.4). Furthermore, the Domain Names were operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This supports the finding of bad faith use (Arkema France v. Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

In addition to the above the Panel considers Respondent’s registration of the second Domain Name subsequent to the bad faith registration and use of the first Domain Name, which targeted also Complainant’s marks, thereby indicating the implausibility of any good faith use to which the second Domain Name may be put (WIPO Overview 3.0, section 3.1.2, 3.3).

The fact that the First Website is currently inactive does not change the above findings.

Under these circumstances, the Panel finds that Respondent has registered and used the Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

7. Decision

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 <imc-financial.com> and <imc-financialmarket.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: July 20, 2021