WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BGC Partners, Inc., BGC Partners, L.P., BGC Partners (Australia) Pty Limited v. Dean McCarthy, BGC Trading Pty Ltd

Case No. DAU2015-0012

1. The Parties

The Complainants are BGC Partners, Inc. of New York, New York, United States of America (“United States”), BGC Partners, L.P. of New York, New York, United States, BGC Partners (Australia) Pty Limited of Sydney, New South Wales, Australia, represented by Kilpatrick Townsend & Stockton LLP, United States (individually and collectively “the Complainant”).

The Respondent is Dean McCarthy, BGC Trading Pty Ltd of Gold Coast, Queensland, Australia.

2. The Domain Names and Registrar

The Domain Names <bgcpartners.com.au> and <bgctrading.com.au> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 15, 2015.

The Center appointed Nicholas Weston as the sole panelist in this matter on April 23, 2015. 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, being the language of the Registration Agreement.

4. Factual Background

The following facts are undisputed.

The Complainant operates brokerage for transacting and trading in financial instruments, and in real estate services, annually conducting, according to the Complainant, over USD 200 trillion in transactions for its clients. The Complainant holds registrations for the trademark BGC in a number of countries including the United States and Australia, which it uses to designate financial services such as commodities and securities and related trade execution as well as electronically available information and electronic execution platforms relating to these types of financial and broking services in Classes 9, 36, 38 and 42. Registration has been in effect in Australia since 2004. Variations of the trademark in the United States include the registered trademarks BGC PARTNERS and BGC TRADERS.

The Complainant is also the owner of, inter alia, the domain name <bgcpartners.com>, registered in 2004, which resolves to a website about the Complainant’s global brokerage business.

The Domain Names <bgcpartners.com.au> and <bgctrading.com.au> were registered on February 4, 2015 and February 8, 2015 respectively.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademarks BGC, BGC PARTNERS and BGC TRADERS in various countries as prima facie evidence of ownership.

The Complainant submits that the mark BGC is distinctive and that its rights in that mark predate the registration of the Domain Names <bgcpartners.com.au> and <bgctrading.com.au>. It submits that the Domain Names are confusingly similar to its trademark, because the Domain Names incorporate in their entirety the BGC trademark and were registered more than ten years before the Respondent registered the Domain Names.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names because the Respondent has no trademark rights in, or license to use, the BGC mark.

Finally, the Complainant alleges that the registration and use of the Domain Names was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b). On the issue of registration, the Complainant contends that the Respondent could not have registered the Domain Names without having the BGC trademark in mind given that the mark is well-known.

On the issue of use, the gist of the Complainant’s contention is that the Respondent uses the Domain Names to offer its own financial transaction electronic platforms. According to the Complainant, the Respondent’s website makes repeated uses of the BGC marks and, in so doing, suggests some kind of affiliation with the Complainant.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Domain Names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered or subsequently used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case, as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the BGC trademark acquired through use and registration which predate the date of registration of the Domain Names by more than ten years. The Panel finds that the Complainant has rights in the mark BGC in Australia pursuant to Australian Trade Mark Registration No. 1015542 registered from August 12, 2004. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). Also, paragraph 1.8 of the auDA auDRP Overview 1.0 indicates such rights may arise as a licensee. The Panel finds that the Complainant has rights in the mark BGC.

The Panel finds that the Domain Names, which contain the BGC trademark in its entirety, are both confusingly similar to the BGC trademark. The confusion is compounded having regard to the similarity of the Domain Names with the Complainant’s registered trademarks BGC PARTNERS and BGC TRADERS.

In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the Panel held that “The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. Further, in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the Domain Names and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”

The Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the Domain Names would be caused to wonder if there was an association with the Complainant’s trademark rights, particularly having regard to the Complainant’s registered trademarks BGC PARTNERS and BGC TRADERS. The Domain Names <bgcpartners.com.au> and <bgctrading.com.au> are therefore confusingly similar to the BGC trademarks.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Names:

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

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

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

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Names or to use the BGC trademark. The Complainant has prior rights in the BGC trademark which precede the Respondent’s registration of the Domain Names by more than ten years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names, and the burden is thus on the Respondent to produce evidence to rebut this presumption, see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and WIPO Overview 2.0, paragraph 2.1.

The Respondent has failed to respond and so has not shown that it has acquired any trademark rights in respect of the Domain Names or that the Domain Names are used in connection with a bona fide offering of goods or services. To the contrary, the Domain Names have each been used in respect of websites which feature, prominently and frequently, the BGC trademark, they contain content cribbed from other websites offering, as the Complainant submits: “the very services and products associated with Complainant and its BGC marks”. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.

The Respondent is not a reseller or distributor of the Complainant’s BGC electronic trading execution platforms. It cannot therefore be said that the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which suggest that, in certain limited circumstances, the use by a reseller or distributor of a third party’s trademark in a domain name may amount to a bona fide offering of goods or services, apply. See also paragraph 2.3 of the WIPO Overview 2.0.

There has been no evidence adduced to show that the Respondent has been commonly known by the Domain Names, nor does any of the evidence demonstrate that the Respondent is making legitimate non-commercial or fair use of the Domain Names.

The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Domain Names have been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 another person 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 a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.”

The evidence that the Respondent registered and has used the Domain Names in bad faith is overwhelming. This Panel finds, as other Panels have done, that the Complainant’s trademark is well-known (see BGC Partners, Inc., BGC Partners, L.P. v. Bob Jenkins, WIPO Case No. D2009-0856; BBG Communications, Inc. v. Andrew Posner, WIPO Case No. D2012-1681). The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” The names registered by the Respondent, the unlikelihood that registering a domain name containing the Complainant’s well-known trademark was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, see L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg, WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of domain names (containing a trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Domain Names a decade after the Complainant established trademark rights in the BGC mark.

In this Panel’s assessment, two conclusions can therefore be drawn about the Respondent from its use of the Domain Names resolving to the Respondent’s website. First, its conduct is a deliberate attempt to suggest some sponsorship, affiliation or endorsement by the Complainant of the products and services promoted on the Respondent’s websites aimed as they are at the very same sector in which the Complainant plays. Second, in this Panel’s view, it is also in breach of the “GoDaddy Domain Name Registration Agreement” registration for breach of the warranty: “You represent and warrant to the best of your knowledge, neither the registration of the domain, nor manner it is directly or indirectly used, infringes the legal rights of any third party.”

The diversion of Internet users for commercial gain is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. Steering unsuspecting Internet visitors to competing products and services, taking advantage of the confusion created by the similarity of the Domain Names to the Complainant’s trademark is the very essence of bad faith use under the Policy.

This Panel finds that the Respondent must have been aware of the Complainant’s well-known trademark. This Panel finds that the Respondent has taken the Complainant’s trademark and incorporated it into the Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users away from the Complainant’s webpage to the Respondent’s websites for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 Names <bgcpartners.com.au> and <bgctrading.com.au> be transferred to the Complainant BCG Partners, L.P.

Nicholas Weston
Sole Panelist
Date: April 30, 2015