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Euroclear PLC v. Chengwen Tsai [2005] GENDND 1635 (11 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Euroclear PLC v. Chengwen Tsai

Case No. D2005-0781

1. The Parties

The Complainant is Euroclear PLC, Baar, Switzerland, represented by Ladas & Parry LLP, United States of America.

The Respondent is Chengwen Tsai, Haymarket, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <euroclearinfor.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2005. On July 21, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 22, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.

The Center appointed Pavan Duggal as the sole panelist in this matter on August 30, 2005. 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 in this administrative proceeding is Euroclear PLC. The dispute in the present Complaint is concerned with the registration of the domain name <euroclearinfor.com>.

The trademark and service mark EUROCLEAR is owned by the Complainant. Since 1968, the EUROCLEAR name and mark have been continuously used by the Complainant, through its affiliates and predecessors in connection with the provision of financial services. The Complainant currently has offices in Amsterdam, Baar, Brussels, Hong Kong, London, Luxembourg, New York, Paris, Sao Paolo, Singapore, and Tokyo and provides a comprehensive range of services to over 2000 major financial institutions in over 80 countries. The Complainant owns many registrations for the mark EUROCLEAR in the United States of America and over 50 other countries.

The Complainant is the owner of most of the trademarks of the Euroclear Group, the world’s leading provider of international and domestic settlement services for securities transactions, including bonds, equities, investment funds and money-market instruments. The Euroclear Group has received acclaim for playing a major role in harmonizing market practices across European markets. The EUROCLEAR mark and name have achieved worldwide fame and are recognized and relied upon by the trade and public as a symbol of quality financial services. Thus, the goodwill associated with such mark and name is of enormous value and among the important assets of the Complainant.

The Respondent is using the domain name <euroclearinfor.com> to run a website on which a description of the Complainant’s services is copied in its entirety from the Complainant’s own website at “www.euroclear.com”. The Respondent’s website allegedly offers current world financial news, international currency rates, depository services, securities administration and “some relationship with financial and more”.

On June 2, 2005, a check of the Respondent’s website at “www.euroclearinfor.com” revealed that the site was inaccessible, though it is unclear whether the website has been deactivated permanently, deactivated temporarily or is simply experiencing technical difficulties. However, the domain name <euroclearinfor.com> is still registered by the Respondent.

5. Parties’ Contentions

A. The Complainant

The Complainant’s contentions in brief are as follows:

The Complainant has submitted its Complaint on the basis of its use, registration and ownership of the EUROCLEAR mark and numerous other trademarks and domain names incorporating the EUROCLEAR mark.

It is contended by the Complainant that under the trademark EUROCLEAR and the various logos accompanying those marks that have evolved since 1968, the Complainant provides a comprehensive range of services to over 2000 major financial institutions in over 80 countries. The Complainant owns many registrations for the mark EUROCLEAR in the United States of America and over 50 other countries.

It has been contended by the Complainant that the Respondent’s domain name is nearly identical or confusingly similar to the Complainant’s EUROCLEAR mark, as it fully incorporates the EUROCLEAR mark.

The Complainant has also contended that the Respondent has no legitimate interest in the domain name. There is no relationship between the Complainant and the Respondent. The Respondent is not affiliated in any manner to the Complainant. The Complainant has not licensed a right for the Respondent to use its famous EUROCLEAR mark, and no other permission or consent has been granted to the Respondent to use that mark. In addition, the Respondent appears to have registered and is using the domain name solely in order to damage the Complainant’s reputation within the financial industry and to dilute the value of the Complainant’s EUROCLEAR mark and name.

It is further contended by the Complainant that the Respondent has registered and is using the domain name in bad faith. The Respondent’s bad faith registration and use is established by the fact that the Respondent registered the domain name in order to prevent the Complainant, the owner of the trademark or service mark, from reflecting the mark in a corresponding domain name. Further, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likehood of confusion with the Complainant’s trademark or service mark as to the source, sponsorship, affilation, or endorsement of the Respondent’s website.

It has been stated that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is the subject of the Complaint.

B. The Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) that the Respondent has no legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel has gone through the various documents filed by the Complainant along with the Complaint and has noted the Complainant’s registrations for the EUROCLEAR mark. These certificates show that the Complainant holds rights in the name EUROCLEAR and, indeed, that the EUROCLEAR trademark and brand has been recognized as being famous. The continuous use of the trademark EUROCLEAR by the Complainant since 1968 clearly shows that the Complainant has rights and legitimate interests in the mark EUROCLEAR.

The Panel notes that the Respondent’s domain name is nearly identical or confusingly similar to the Complainant’s EUROCLEAR mark, as it fully incorporates the EUROCLEAR mark. The mere addition of a common term or phrase such as “infor” to the EUROCLEAR mark is of no import or significance. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark).

The Panel further finds that the domain name in question is confusingly similar to the Complainant’s EUROCLEAR mark and name. The inclusion of “infor”, an abbreviated form of the common, generic descriptor “information”, renders the Respondent’s domain name and the Complainant’s EUROCLEAR mark and name confusingly similar, because “infor” is commonly used by consumers seeking information on the Internet for a specific company or product or on a particular subject. The Respondent’s domain name and the Complainant’s EUROCLEAR mark and name are, in fact, identical, since the addition of a generic term is insufficient to distinguish <euroclearinfor.com> from EUROCLEAR. See, e.g, The Villager, Inc. v. Dial Shoe Company, Inc, 256 F. Supp. 694, 700 (E.D. Pa. 1966) (findng THE VILLAGER and MISS VILLAGER to be confusingly similar); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 302 (D. N.J.1998) (“The minor differences are necessary for the domain name used by the Defendant [<jewsforjesus.org> and <jews-for-jesus.com>] to be functional and do not alleviate the likelihood of confusion between the mark [JEWS FOR JESUS]”) .

Internet users encountering the Respondent’s domain name will be induced into believing that <euroclearinfor.com>, which incorporates the Complainant’s EUROCLEAR mark and name in their entirety, is the website of or relates to the Complainant. See La Caixa d’Estalvis I Pensions de Barcelona v. Tony Eweka, WIPO Case No. D2005-0043 (finding that consumers will be induced into thinking that the domain name <la-caixa-trust-bank.net> relates to the financial entity called “La caixa” or “La CaixaBank”, or “La CaixaTrust” and holding that “introducing additional qualifiers [prefixes, suffixes, adjectives, etc.] to a third-party trademark does not entail a difference in such a manner that it makes its use legitimate).

The Panel concludes that the domain name <euroclearinfor.com> is confusingly similar to the Complainant’s mark EUROCLEAR. The Panel holds that consumers, on seeing the domain name <euroclearinfor.com>, will reasonably believe that it is related to the Complainant. Indeed, consumers who search the Internet for the Complainant by using the Complainant’s name and marks may be directed to the domain name, creating a likelihood of confusion. Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(I) of the Policy.

For these reasons, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is nothing on the record to show that the Respondent has any legitimate interests in respect of the domain name <euroclearinfor.com>. This is further evident from the fact that the domain name, as per the arguments of the Complainant, resolved to a site which claimed to provide information on current world financial news and international currency rates, and render depository and securities administration services as well as “some relationship with financial and more” (which was clearly out-dated). However, at the time of writing, the domain name in question does not resolve to any active website.

Although the Respondent’s website claimed to provide information on current world financial news and international currency rates, and render despository and securities administration services as well as “some relationship with financial and more”, the information that was provided on the Respondent’s website was, in fact, either outdated or non-functional.

Thus, it seems that the Respondent has no legitimate interests in the disputed domain name, rather, the site may damage the Complainant’s reputation within the financial industry and dilute the value of the Complainant’s EUROCLEAR mark and name. See Telstra Corporation Ltd. v. David John Singh, WIPO Case No. D2002-0260 (posting on website of trivial, out of date information “makes obvious” that the Respondent’s use of domain name is “not being used genuinely for the purpose of informing the public”).

In addition, the Respondent has not been granted any license by the Complainant to use its name EUROCLEAR and neither is the Respondent related in any way to the Complainant in any business relationship. No other permission or consent has been granted to the Respondent by the Complainant for use of its EUROCLEAR mark or the domain name in question.

Moreover, notwithstanding that <euroclearinfor.com> was associated with a website claiming to provide information on the European financial community, the Respondent is not using the domain name in connection with the legitimate offering of any goods or services. There appears to be no bona fide offering of goods or services being carried out by use of the disputed domain name at the time of writing. Besides, the Respondent is not commonly known by the concerned domain name unlike the Complainant who has made a name for itself with its trademark EUROCLEAR.

It was held in Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-0185 that where the Complainant asserts that the Respondent has no rights or legitimate interests and where the Respondent fails to contest such assertions, the Panel is entitled to infer that the Respondent has no such rights or interests. See also, Alcoholics Anonymous, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.

In Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, it was held that once a lack of legitimate rights or interests has been alleged by the Complainant, the Respondent is obliged to adequately address this issue. It was also held that this finding is supported by various means which are available to the Respondent under the Policy to show legitimate rights or interests, on a balance of probabilities. The Panel in that case relied on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein, “the Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interest in the domain name”. The Complainant, in this case, has established prima facie that the Respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under paragraph 4(a)(ii) of the Policy.

Thus, on the basis of the material available on record, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <euroclearinfor.com>.

C. Registered and Used in Bad Faith

From a perusal of the case file, it is apparent that the Respondent appears to have registered and is using the domain name for the purpose of causing damage to the Complainant’s reputation within the financial industry and diluting the value of the Complainant’s EUROCLEAR mark and name. Since the Respondent has no rights in the domain name, the reason why the Respondent could have wanted to register and use a domain name incorporating the EUROCLEAR mark seems to be that he knew of the Complainant’s mark and wanted to use it in the domain name in order to damage the Complainant’s reputation within the financial industry and to dilute the value of the Complainant’s EUROCLEAR mark and name.

That the Respondent registered a domain name incorporating the name and trademark of the Complainant, a well-known financial entity, is indicative of bad faith. See La Caixa d’Estalvis I Pensions de Barcelona v. Tony Eweka, WIPO Case No. D2005-0043 (the Respondent’s registration of <la-caixa-trust-bank.net>, which incorporates well-known trademark of well-known financial entity “La Caixa”, “is in itself an indication of bad faith”).

Moreover, the Respondent had previously registered other domain names incorporating the Complainant’s EUROCLEAR mark and name, i.e, <eurocl.com> and <euroclearinformation.com> as well as domain names incorporating the trademarks and names of other well-known financial institutions, i.e, <jpmorganinformation.com> and <abnamroinfor.com>. The said names have subsequently expired. See also J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Recource Marketing, WIPO Case No. D2000-0035 (“ownership of numerous domain names which are the names and marks of well known business entities suggests an intent to profit from the activities of others”). Indeed, the Respondent has engaged in a pattern of registering domain names that add “infor” or “information” to the names of well-known financial institutions, thereby preventing the rightful trademark owners, including the Complainant, from using these domain names.

The Respondent failed to respond to the Complaint in this proceeding thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the domain name.

Further, the Panel holds that the Respondent, through use of the domain name <euroclearinfor.com>, deliberately seeks to confuse potential customers as to the Respondent’s affiliation with the Complainant. This is so as the Respondent’s domain name wholly incorporates the Complainant’s EUROCLEAR mark and name. Further, the Respondent’s website claimed that the Respondent is located in Belgium, where the Complainant’s Euroclear SA/NV and Euroclear Bank SA/NV are headquartered. There are, however, no other financial entities doing business in Belgium under the EUROCLEAR mark and name other than the Complainant’s Euroclear SA/NV and Euroclear Bank SA/NV. In addition, the content of the Respondent’s website associated with <euroclearinfor.com> deliberately exacerbated the confusion caused by the domain name at issue. It copied text directly from the Complainant’s website at “www.euroclear.com”, thus inducing Internet users encountering the site to mistakenly believe that they had reached a genuine website of the Complainant. See also Autoprof.com, Inc. t/a Autoprof v. Mukul Haash, WIPO Case No. D2005-0064, (finding bad faith where the Respondent used content from the Complainant’s website as “[d]istorting and using the Complainant’s webpage at the website to which the subject domain name resolved, is mischief which calls into question the bona fides of registration and its bad faith use. It is clear that the Respondent knew of the Complainant’s mark when registering the disputed domain name.”); Ikarus Software GmbH v. Longo, WIPO Case No. D2004-0646 (also finding bad faith where the Respondent used content from the Complainant’s website: “The panel does not see another explanation of the website content…other than that the Respondent has attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of his website”). The Respondent claimed in its site that it provides world financial information as well as financial services, thereby increasing the likelihood of confusion. The website was, in fact, nothing more than a “fake” website, and the inclusion of financial information which was clearly outdated is evidence of bad faith registration and use of the domain name in question.

The Panel finds that the Respondent provided the concerned registrar, Network Solutions, with false address and telephone information, which is a violation of paragraph 2 of the Policy. The U.S. Post Office’s Express Mail service was unable to deliver a letter sent by the Complainant to the Respondent, and informed the Complainant that there is no such address and no such telephone number. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (bad faith demonstrated where the Respondent provided false contact information to the registrar with whom the domain names at issue were registered).

The Respondent had also previously registered two other domain names incorporating the Complainant’s EUROCLEAR mark and name <eurocl.com>, <euroclearinformation.com>, which have expired. In addition, the Respondent previously owned a domain name incorporating the name “J.P. Morgan”, another famous financial institution. The domain name <jpmorganinformation.com> has also expired.

In Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001, the Panel held that “the fact that the Respondent has registered at least two other domain names identical to well-known trademarks as a pattern of conduct clearly indicates that the Respondent has registered the domain name in order to prevent the Complainant from reflecting their trademark and tradename in a corresponding domain name”. The same can be said of the Respondent in this case, as it appears he has engaged in a similar activity of registering domain names in order to direct Internet users, damaging the Complainant’s reputation within the financial industry and diluting the value of the Complainant’s EUROCLEAR mark and name. This clearly constitutes a case of bad faith.

Considering the Complainant’s trademark and the previous content of the website linked to the domain name, it seems highly likely that the Respondent was aware of the Complainant’s mark EUROCLEAR. Therefore, by knowingly choosing a domain name comprising and consisting of the Complainant’s trademark, the Respondent has intentionally created a situation which is at odds with the legal rights of the Complainant.

The above contentions on the matter clearly show bad faith on the part of the Respondent. The Panel is therefore of the opinion that the registration and use of the disputed domain name by the Respondent has been in bad faith. The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 name <euroclearinfor.com> be transferred to the Complainant.

Pavan Duggal
Sole Panelist

Dated: September 11, 2005