WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Börse Aktiengesellschaft (Deutsche Börse AG) v. Jerry Amuno, J.Skylimit Publishing / WhoisGuard Protected, WhoisGuard, Inc.

Case No. D2015-0605

1. The Parties

The Complainant is Deutsche Börse Aktiengesellschaft (Deutsche Börse AG) of Frankfurt am Main, Germany, represented by Grünecker Patent Attorneys and Attorneys-at-Law, Germany.

The Respondent is Jerry Amuno, J.Skylimit Publishing of South Pasadena, California, United States of America / WhoisGuard Protected, WhoisGuard, Inc., of Panama, Panama, self-represented.

2. The Domain Names and Registrar

The disputed domain names <eurex.exchange> and <boerse-frankfurt.exchange> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) concerning the disputed domain name <eurex.exchange> on April 7, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <eurex.exchange>. On April 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <eurex.exchange> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On April 14, 2015, the Complainant sent an email communication to the Center requesting to include the disputed domain name <boerse-frankfurt.exchange> to its Complaint. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <boerse-frankfurt.exchange>. On April 15, 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 Complainant filed an amended Complaint on April 17, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. The Response was filed with the Center on May 9, 2015.

The Center appointed Alfred Meijboom as the sole panelist in this matter on May 19, 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.

4. Factual Background

The Complainant is one of the world’s leading market place organizers for financial services, particularly trading in shares and other securities, and it operates the Frankfurt Stock Exchange. The Complainant is owner of the following trademarks:

- German trademark registration with no. 2066055 EUREX of May 27, 1994 for goods and services in classes 9, 36 and 42 for, inter alia, stock exchange quotations; financial affairs, in particular services of a stock exchange, a bank and a stockbroker and/or other financial broker;

- German trademark registration with no. 30309064 EUREX of April 24, 2003 for goods and services in classes 9, 16, 35, 38, 41 and 42 for, inter alia, software; financial affairs, in particular services of a stock exchange and of an electronic stock exchange; information services relating to finance and the stock exchange provided online from computer databases or the internet;

- German trademark registration with no. 39756930 of February 2, 1998 for goods and services in classes 9, 16, 35, 38, 41 and 42 for, inter alia, financial affairs, in particular services of a stock exchange and of an electronic stock exchange;

- German trademark registration with no. 0646752 of September 28, 2006 for goods and services in classes 9, 35, 36 and 42 for, inter alia, financial affairs, in particular services of a stock exchange and of an electronic stock exchange; information on finance and exchange via internet;

- International registration with no. 635015 EUREX of December 5, 1994 for goods and services in classes 9, 16, 36 and 42 for, inter alia, financial affairs, in particular services of a stock exchange for Austria, Belarus, Benelux, Czech Republic, France, Hungary, Italy, Liechtenstein, Monaco, Poland, Portugal, San Marino, Slovenia, Spain, Switzerland and Ukraine;

- International registration with no. 812147 EUREX of July 28, 2003 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 for, inter alia, financial affairs, in particular services of a stock exchange, electronic stock exchange; stock exchange quotations, for Australia, Belarus, Croatia, Czech Republic, Estonia, Hungary, Korea, Japan, Latvia, Liechtenstein, Lithuania, Norway, Poland, Russian Federation, Singapore, Slovenia, Slovakia, Turkey and Ukraine;

- Community trademark registration no. 744763 EUREX of June 8, 1999 for goods and services in classes 9, 16, 35, 36, 38 and 42 for, inter alia, Financial affairs, in particular banking, stock exchange and electronic stock exchange services and stock exchange and/or financial brokerage services; stock exchange quotations;

- Community trademark registration no. 3378973 EUREX US of March 21, 2005 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 for, inter alia, Financial affairs, in particular services of a stock exchange, of an electronic stock exchange; services of a bank, of a clearing house as well as of a stock and/or financial broker; stock exchange quotations;

- Community trademark registration no. 5228408 of August 0, 2007 for goods and services in classes 9, 16, 35, 36, 38 and 42 for, inter alia, financial affairs, in particular services of a stock exchange, of an electronic stock exchange; banking, clearing house, stock exchange and/or financial brokerage services; quotation of stock exchange prices; and

- Swiss trademark registration no. 552765 of August 10, 2006 for goods and services in classes 9, 16, 36 and 42 for, inter alia, financial affairs, in particular services of a stock exchange, electronic stock exchange; stock exchange quotations.

The Respondent registered both disputed domain names on September 4, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant has customers in Europe, the United States of America (“USA”),_and Asia, who are served by more than 3,200 employees at locations in Germany, Luxemburg, Switzerland, and the USA, as well as at its representative offices in London, Paris, Chicago, New York, Hong Kong, Dubai, Moscow, Beijing, Tokyo, and Singapore. It is the leading company in its field of business in Germany and its website is accessible at “www.deutsche-boerse.com”. Eurex Frankfurt AG and Eurex Zürich AG are wholly owned subsidiaries of the Complainant and form the world’s leading futures and options exchange. They operate the market place for the trading and clearing of Euro-denominated derivatives under the name “Eurex”. Currently some 700 locations worldwide are connected to Eurex. Their website is accessible at “www.eurexchange.com.” The Complainant owns many trademark registrations for EUREX and BÖRSE FRANKFURT (the latter being German for “exchange Frankfurt”), as listed in paragraph 4 above.

Both disputed domain names resolve to websites in German with financial trade and exchange related advertisements which directly compete with the services for which the Complainant registered its trademarks, which advertisements are apparently pay per click links.

On December 1, 2014, the Respondent sent an email to the Complainant’s CEO, notifying him that the Respondent is owner and registrant of the disputed domain name <eurex.exchange>, explaining that the “.exchange” generic Top Level Domain (“gTLD”) shall become the standard for all stock exchange / derivatives organizations, and that the disputed domain <eurex.exchange> can be used as the Complainant’s primary or secondary website, the latter for example if the visitors of the disputed domain name <eurex.exchange> will automatically be redirected to land on the Complainant’s current site “eurexchange.com”. The Respondent offered the disputed domain name privately on sale and invited the Complainant to make a bid. The Complainant offered an amount of EUR 3,500 to hedge costs, but did not receive a reply.

The Complainant claimed that the disputed domain names are confusingly similar to the Complainant’s registered trademarks for EUREX and BÖRSE FRANKFURT as listed in paragraph 4 above and the disputed domain names consist entirely of the Complainant’s trademarks, while the gTLD “.exchange” is purely descriptive and should be disregarded. The Complainant further observes that words with an o-Umlaut (“ö”) are generally replaced by the letters “oe” so that a small divergence of the spelling of the “ö” in the disputed domain name <boerse-frakfurt.exchange> is irrelevant.

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Complainant has not authorized or otherwise licensed the Respondent to use the Complainant’s trademarks in the disputed domain names, the Respondent does not use or demonstrably prepare the use of the disputed domain names with respect to a bona fide offering of goods or services, and the Respondent is not commonly known by the disputed domain names.

Internet users who want to find the Complainant’s websites and enter the Complainant’s trademarks with “exchange” shall be diverted to the Respondent’s website, and they can be confused in believing that the links on the websites at the disputed domain names are provided by the Complainant, while these links are actually related to a significant number of the Complainant’s competitors. Even if the Respondent does not directly benefit from such links, the Respondent allowed the links to be published and is therefore liable. Further, the offer for sale as mentioned above is, according to the Complainant, sufficient to determine that the Respondent acted in bad faith. And finally, the Complainant points at the fact that both disputed domain names were registered on the same day, which reaffirms that the Respondent was aware of the Complainant and its registered trademarks at that time, and it registered the disputed domain names with the sole purpose of selling them to the Complainant.

B. Respondent

The Response is limited to the disputed domain name <eurex.exchange> and is silent about the disputed domain name <boerse-frankfurt.exchange>.

The Respondent submits that he registered the disputed domain name <eurex.exchange> because he had the intention of setting up a business in 2014 called “Eurex Exchange and Deliveries LLC”, which was meant to focus on the exchange of goods from the Middle East to Europe and vice versa. In this respect “Eurex” was short for “European Express”. The Respondent asserts that he was not familiar with the Complainant and its trademarks at that time. Due to some unfortunate events he was incapable of building the business and reluctantly decided to discontinue the business so that he had no use for the disputed domain name <eurex.exchange>. When the Respondent did some research he found the Complainant and he decided to send the email to the Complainant. When he did not receive a reply from the Complainant’s head of technology he sent the email to the Complainant’s CEO as mentioned in paragraph 5.A above. The Respondent alleges that he only found the Complainant’s reply after he received the Complaint when he searched his spam filter. The Respondent submits it paid USD 60,000 for the disputed domain name <eurex.exchange> and therefore was aiming at getting a higher bid than EUR 3,500, but remains open to discuss payment for transfer of the disputed domain name.

The Respondent further claims that he believed that due to various checks and balances in the domain buying business, he could not have acquired the disputed domain name if a third party who believed to have rights in the domain name made the governing bodies aware of such rights.

The Respondent further denies bad faith on his side, as his intent was just to hold the disputed domain name <eurex.exchange> until he decided the right host and design for a website for his business, or eventually sold the disputed domain name <eurex.exchange> as the planned business discontinued. The landing page was simply a mistake.

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the disputed domain names are 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 names; and

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

A. Identical or Confusingly Similar

It is well established that the gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.exchange”.

The Panel finds that the two disputed domain names are identical and confusingly similar to the trademarks identified in paragraph 4 above. The Panelist considers the words “Börse Frankfurt” of the stylized trademarks BÖRSE FRANKFURT sufficiently dominant to be considered as such in the comparison of the disputed domain name <boerse-frankfurt.exchange > and the stylized trademarks. The Respondent has taken the Complainant’s trademark EUREX in its entirety, so that the disputed domain name <eurex.exchange> is identical to the trademark in which the Complainant has rights. With respect to the disputed domain name <boerse-frankfurt.exchange> the Respondent changed the o-Umlaut to “oe” which is the letter combination that is commonly used on keyboards with international script (see e.g. Klöckner & Co SE v. Klocke of America, Inc., WIPO Case No. D2010-0464), and merely added a hyphen between “boerse” and “frankfurt”. Neither change distinguishes the disputed domain name <boerse-frankfurt.exchange> from the trademark BÖRSE FRANKFURT.

Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has shown that it has not authorized the Respondent to use the Complainant’s trademarks, and that the Respondent is not commonly known by the disputed domain names, which the Respondent has not challenged. Further, the Panel agrees with the Complainant that the Respondent’s use on the websites at the disputed domain names of sponsored links to services which, at least partially, compete with the Complainant’s services, is clearly not a legitimate noncommercial or fair use of the disputed domain names. The Respondent claims that it registered the disputed domain name <eurex.exchange> for a European - Middle Eastern trading business, and apparently that this should be considered as constituting preparations for fair use of the disputed domain name <eurex.exchange>. The Respondent’s explanation seems, however, invented for the occasion as it is a rather improbable story which can certainly not explain why the Respondent, who claimed that he wasn’t familiar with the Complainant and its trademarks, registered the disputed domain name <boerse-frankfurt.exchange> on the very same date as the disputed domain name <eurex.exchange>.. If the Respondent had actually made preparations for the alleged new business, he should have submitted evidence in support of his claim. The Panel further deems the Respondent’s claim that the use of such sponsored links was a mistake as lying entirely within the Respondent’s control.

The Panel is therefore satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names and the second element of paragraph 4(a) of the Policy is also met.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain names in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks the Complainant is relying on as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service offered on the Respondent’s website or location.

In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain names he must have been familiar with the Complainant and the trademarks the Complainant relies on in this procedure, as the Respondent did not only register the EUREX trademarks as a domain name, but at the same time the BÖRSE FRANKFURT trademarks, which is not only the Complainant’s trademark but also its company name. The Panel therefore considers the Respondent’s claim that he was not aware of the Complainant and its trademarks when it registered the disputed domain names not only inexplicable, but also extremely unconvincing, in the Panel’s view. Further, the Respondent offered to sell the Complainant the disputed domain name <eurex.exchange> within months after he registered the disputed domain names. Without evidence, which the Respondent did not provide, the Panel cannot accept the Respondent’s claim that he paid USD 60,000 for the disputed domain name <eurex.exchange>. According to the “.exchange” registrar’s website, the registration fee for an “.exchange” domain name is USD 49. In absence of evidence to the contrary, the Panel considers the Respondent’s request to the Complainant to discuss a transfer of the disputed domain name for, what is likely to be, a considerable sum exceeding the registration related costs, as indicating that the Respondent has registered the disputed domain names primarily for the purpose of selling the disputed domain names to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain names.

Consequently, the third and last element of paragraph 4(a) of the Policy is also met.

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 disputed domain names, <eurex.exchange> and <boerse-frankfurt.exchange> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: June 1, 2015