WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plus500 Ltd. v. Plus Choice
Case No. D2021-2493
1. The Parties
The Complainant is Plus500 Ltd., Israel, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Plus Choice, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <plus500cy.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2021, 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 August 5, 2021, 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, 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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Jon Lang as the sole panelist in this matter on October 1, 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. Factual Background
The Complainant is listed on the London Stock Exchange and together with its subsidiaries, (the “Group”) is a leading online provider of Contracts for Difference (“CFDs”). The Group’s offering is available internationally with a significant presence in the United Kingdom (“UK”), Australia, the European Economic Area (“EEA”) and the Middle East. It has customers located in over 50 countries.
The Group has several regulated, wholly-owned subsidiaries which have been granted licences by regulators in the UK, Australia, Cyprus, Israel, New Zealand, South Africa, Singapore, and the Seychelles. One such subsidiary is Plus500CY Ltd, which is authorized and regulated in Cyprus by the Cyprus Securities and Exchange Commission (“CySEC”) (registration number 250/14). Plus500CY Ltd is authorized to offer its services in the EEA on a cross-border basis.
The Group provides its services, inter alia, through applications on Apple’s App Store and Google Play as well as through various websites, including “www.plus500.com” (the “Complainant’s Website”).
The Complainant and members of its Group are proprietors of many registrations and applications for word and figurative marks that include the term “PLUS500” in, inter alia, the European Union, UK, United States of America, Israel, Australia, Japan, New Zealand and China (the “PLUS500 Marks”), including the following registered trademarks for PLUS500: Israel Patent Office trademark number 310600, registered April 1, 2019, and Australian Intellectual Property Office trademark number 1522930, registered August 7, 2013.
The Complainant has invested a great deal of time and money in developing the Complainant’s Website and all content available thereon, including marketing and promotional materials, photos, designs, graphics, etc., which are all proprietary to the Complainant (“Copyright Materials”).
The Domain Name was registered on May 22, 2021.
In 2019, the Complainant discovered that the operator of the website then associated with an earlier registration of the Domain Name used the PLUS500 Marks in order to represent itself as being affiliated with the Complainant and the Group. The Complainant sent a cease and desist letter to the registrant on February 28, 2019, followed by other letters to, for instance, the registrar and hosting services provider, in an attempt to bring an end the infringing activity. The infringing activity appeared to stop but approximately a year later, the Complainant discovered that the website had been reactivated and that infringement of the Complainant’s rights continued. The Complainant once again took steps to stop the infringing activity. The Complainant, however, discovered that the Domain Name had been registered again, possibly by a different registrant, and was being used in relation to a new website (the “Disputed Website”) which copied entire pages from the Complainant’s Website, including the PLUS500 Marks and logo, and appeared to offer services related to trading, similar to those provided by the Group.
The Complainant sent a further cease and desist letter on May 30, 2021 to the Respondent. The Respondent did not respond.
The Disputed Website is presently inactive.
5. Parties’ Contentions
The following is a summary of the main assertions of the Complainant.
The Complainant, as part of the Group, has invested, and continues to invest, significant resources in promoting its offerings under the PLUS500 brand and trademarks around the world. For example, in 2019 the Group’s advertising expenses amounted to USD 87.5 million and in 2020 they increased to USD 204.2 million.
The Group has invested and continues to invest significant resources in various online and offline marketing initiatives to promote the PLUS500 brand.
The infringing activity described earlier is causing harm to the Complainant. Indeed, such activity might harm the Complainant’s and Group’s reputation and standing with regulatory authorities given that the Commissione Nazionale per le Società e la Borsa (“CONSOB”), the Italian financial regulator, issued an official warning against the website associated with the Domain Name on February 12, 2020, and blocked access to it from Italy, a decision which was also cited by other regulators, such as the Comisión Nacional del Mercado de Valores (“CNMV”), the Spanish financial regulator, and by the Financial Services and Markets Authority (“FSMA”), the Belgian financial regulator.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has a subsidiary company named Plus500CY Ltd., and is the owner of the domain name <plus500.com.cy>.
The Domain Name is identical and confusingly similar to the PLUS500 Marks, as it consists of the term “plus500” with the mere addition of the geographical term “cy” (the country code for Cyprus), followed by the generic Top-Level Domain (“gTLD”) “.com” (which may be disregarded for comparison purposes). The use of a famous mark in its entirety together with a geographic term creates a domain name that is confusingly similar to the famous mark.
The Complainant further submits that the term “plus500cy” is confusingly similar to the PLUS500 figurative marks described in its Complaint.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent is not affiliated in any way with the Complainant and has never been licensed or otherwise authorized to use the PLUS500 Marks.
The Respondent has not used, or made demonstrable preparations to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Until recently, the Disputed Website to which the Domain Name resolved included the PLUS500 Marks and copied almost the entire Copyright Materials in order to impersonate the Complainant and purport to offer online financial trading services similar to those offered by the Complainant and the Group, without the Complainant’s approval. Internet users who arrived at the Disputed Website before it ceased to be active, hoping to find the services of the Complainant and its Group, might not have realized they had not in fact done so.
The Respondent used the Domain Name to unlawfully impersonate the Complainant and benefit from the reputation of the PLUS500 Marks whilst misleading and attracting the Group’s customers, or potential customers, to the Disputed Website. Such use does not constitute a legitimate interest or a bona fide offering of goods or services.
Currently, the Domain Name resolves to an inactive website. Passive holding of a domain name does not constitute a bona fide offering of goods or services
To the best of the Complainant’s knowledge, neither the Respondent, nor any business operated by it, is or has ever been commonly known by the Domain Name.
The Domain Name was registered and is being used in bad faith.
The Complainant has owned and used the PLUS500 Marks since long before the Respondent registered the Domain Name. At the time of its registration, PLUS500 was (and still is) a very well-known brand that had been in existence for over a decade. It is clear that the Respondent knew, or at the very least should have known, about the Complainant’s marks and business.
Use of the Domain Name, which is identical to the PLUS500 Marks and to the name of one of the Complainant’s subsidiaries, is clear evidence that the Respondent intentionally attempted to attract and mislead Internet users to the Disputed Website, for commercial gain, by creating a likelihood of confusion with the PLUS500 Marks and the Complainant’s subsidiary as to the source, sponsorship, affiliation, or endorsement of the Disputed Website.
Given the considerable worldwide reputation of the PLUS500 Marks, Internet users would inevitably be confused into thinking that the Domain Name is affiliated with the Complainant.
The fact that currently the Disputed Website is not active, also constitutes use of the Domain Name in bad faith.
The PLUS500 Marks continue to gain reputation following the Complainant’s vast investment in various marketing initiatives.
The fact that the Respondent registered a domain name that consists of such a well-known mark for online trading services is a clear indication of opportunistic bad faith.
The Respondent has acted and continues to act in bad faith in the registration and use of the Domain Name, which is identical or confusingly similar to the PLUS500 Marks in which the Complainant and Group have rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the PLUS500 Marks.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the PLUS500 Marks but adds, immediately following it, the letters “cy”.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. Where the relevant trademark is recognizable in a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. The PLUS500 Marks are clearly recognizable within the Domain Name. The addition of the letters “cy”, which represents an abbreviation for Cyprus, as well as the country code Top-Level Domain for Cyprus, does not prevent a finding of confusing similarity. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to the PLUS500 Marks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent does indeed lack rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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. Here, however, the Respondent is not known by the Domain Name, and given the misleading nature of the website to which the Domain Name once resolved (which displayed the PLUS500 Marks, other material, the intellectual property rights in which belong to the Complainant and/or members of its Group, and which advertised similar services to those provided by the Complainant), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element of which is of course the Complainant’s well known PLUS500 Mark, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which for some period of time was used to resolve to a misleading “copycat” site displaying the Complainant’s PLUS500 Marks and other material in which the Complainant and/or members of its Group enjoy rights. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. Indeed, in Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the Domain Name would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other online location) or of products or services on it.
It is beyond doubt, given the nature of the website to which the Domain Name once resolved, that the Respondent was aware of the PLUS500 Marks at the time of its registration and that it sought to create a misleading impression of association with the Complainant. It can readily be assumed that the Respondent derived (or had the opportunity to derive) some commercial benefit from the website to which the Domain Name once pointed.
The circumstances of this Complaint mirror the example of circumstances illustrative of bad faith registration and use described in paragraph 4(b)(iv) of the Policy, although the Complainant would no doubt succeed in demonstrating bad faith registration and use for the purposes of the Policy on other grounds too.
For the sake of completeness, given that the Domain Name is presently inactive, the Panel will deal briefly with the doctrine of passive holding. A passive holding (or non-use) of a domain name can support a finding of bad faith. As section 3.3 of the WIPO Overview 3.0 states, panels must “look at the totality of the circumstances in each case” and “ factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. There is no shortage of factors here which lend support for a finding of bad faith under the passive holding doctrine, including for example the Respondent’s past use of the Domain Name, the reputation of the Complainant’s PLUS500 Marks, and the lack of a response by the Respondent.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <plus500cy.com> be transferred to the Complainant.
Date: October 14, 2021