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Deutsche Börse AG v. Ramon Campos Munoz [2005] GENDND 766 (23 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Börse AG v. Ramon Campos Munoz

Case No. D2005-0346

1. The Parties

The Complainant is Deutsche Börse AG, Frankfurt am Main, Germany, represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany.

The Respondent is Ramon Campos Munoz, Valencia, Spain.

2. The Domain Names and Registrar

The disputed domain names are <eurexchange.info> and <eurexchange.org>. They are registered with Ascio Technologies Inc. (DK).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2005. The same day, the Center transmitted by email to Ascio Technologies Inc. (DK) a request for registrar verification in connection with the domain names at issue. On April 6, 2005, Ascio Technologies Inc. (DK) 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. Ascio Technologies Inc. (DK) also confirmed that the language of the registration agreement is English. 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”).

On April 13, 2005, the Center sent a Complaint Deficiency Notification to the Complainant. The Complaint was properly amended on April 14, 2005. 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 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 4, 2005. The Response was filed with the Center on April 23, 2005.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on May 9, 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.

After the Response was received, the Complainant filed an unsolicited submission dated May 9, 2005. In response to this submission, the Respondent also filed an unsolicited submission on May 14, 2005. The decision of the Panel as to the admissibility of these submissions is set out below (paragraph 6).

4. Factual Background

The Complainant is a company based in Germany operating in the business of trading shares and other securities. Together with the company SWX Swiss Exchange, the Complainant jointly operates EUREX, a futures and options exchange. EUREX is an electronic trading platform for derivative products. The EUREX exchange is accessible under the domain name <eurexchange.com>. This domain name is owned by SWX Swiss Exchange.

The Complainant is the owner of several trademarks consisting of or containing the word EUREX. In particular, the Complainant is the owner of the following trademarks (amongst others):

Word trademark EUREX, No. 2066055, registered in Germany (filing date: May 27, 1994, last renewed on February 10, 2004) in international classes 36, 09, 42.

Word trademark EUREX, No. 30309064.2, registered in Germany (filing date: February 19, 2003), in international classes 36, 09, 35, 38, 41, 42.

Word and device trademark EUREX, No. 39756930.0, registered in Germany (filing date: November 27, 1997) in international classes 36, 09, 16, 35, 36, 38, 42.

Word trademark EUREX, No. 744763, registered as community trademark (filing date: February 13, 1998) in international classes 9, 16, 35, 36, 42.

Word trademark EUREX, No. 635015 (filing date: December 5, 1994) registered in the International Register, based in Germany with designations in several European countries in international classes 09, 16, 35, 36, 38, 41, 42.

Word trademark EUREX, No. 812147 (filing date: July 28, 2003) registered in the International Register, based in Germany with designations in several European countries in international classes 09, 16, 35, 36, 38, 41, 42.

The Respondent is an individual living in Spain. Respondent stated that he has 30 years of professional experience as “Manager Banking” with specialization in the stock and financial markets, as well as an “artistic experience and academic formation as Graduate in Applied Arts and Design”. He registered the disputed domain names on February 28, 2004.

In November / December 2004, the disputed domain names resolved to two active web sites. On these web sites, the Respondent displayed, at the top of the page, a large banner which prominently displayed the word “EUREXCHANGE” with, on each side, the Complainant’s registered EUREX figurative trademark. In addition, the web sites contained the statement “Welcome to eurexchange.org access to world markets exchange”. They also contained links to other exchange and financial web sites. The web sites also featured advertising banners. Finally, the web site “www.eurexchange.org” included a disclaimer, written in small print at the bottom of the page and reading “This site is not affiliated in any way with Eurex European Derivative Exchange”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain names <eurexchange.org> and <eurexchange.info> are, in their second-level parts “eurexchange”, confusingly similar to its well-known EUREX trademarks, which enjoy a broad protection in the field of financial goods and services. The Complainant points out that the first and relevant part of the domain names, “eurex”, is identical to the mark EUREX. The addition of the word “(ex)change” to the distinctive term “eurex” does not sufficiently distinguish the domain names <eurexchange.org> and <eurexchange.info> to avoid a likelihood of confusion among the relevant consumer circles. On the contrary, according to the Complainant, it increases the likelihood of confusion, since it achieves the play on words (i.e. eurex-(ex)change) also used by the Complainant with its partner SWX Swiss Exchange in the domain name <eurexchange.com>, which offers access to the official Eurex web site. The overall impression made by the disputed domain names suggests that they belong to the Complainant, and consumer confusion is inevitable. The Complainant also mentions that the addition of the top-level domain extensions “.org” and “.info” does not reduce the likelihood of confusion as top-level extensions must be ignored when assessing the identity or similarity between domain names and trademarks.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The Respondent’s family name (Campos Munoz) has nothing to do with the terms “eurex” or “eurexchange”.

- “Eurexchange” is not a descriptive or generic term that can be freely used by anybody.

- The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s EUREX trademarks or to promote the Complainant’s products and services.

- The Respondent is not making any legitimate non-commercial use of the domain names. On the contrary, the Respondent offered information services, as well as links to Internet services and web sites of other exchange institutions. According to the Complainant, it can be assumed that the Respondent did not offer all the information services and links free of charge. The Complainant alleges that, in general, the companies and institutions whose web sites are connected with the Respondent’s web sites by means of the links must pay a fee each time their web site is accessed. Should that not have been the case initially, it is conceivable that the Respondent’s Internet portal would become a “pay per click” web site as soon as it would have become better known, as it often occurs.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. According to the Complainant, by using the domain names, the Respondent deliberately intended to attract Internet users to his web sites and web sites of the Complainant’s competitors, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites. To support this allegation, the Complainant mentions the following main points:

- The Eurex exchange and its web site accessible under the domain name <eurexchange.com> is well-known to the relevant consumer circles. Thus, the Respondent is certainly acquainted with the fact that he uses the same play on words in his domain names, as the Complainant and SWX Swiss Exchange use in their domain name <eurexchange.com>.

- The Respondent initially used the Complainant’s figurative trademark EUREX, displayed on the homepage of his web sites. According to the Complainant, Internet users who know the trademark EUREX, as well as the domain name <eurexchange.com>, will be misled regarding the source, sponsorship, affiliation or endorsement of the Respondent’s web sites when confronted with them.

- The mention “This site is not affiliated in any way with Eurex European Derivatives Exchange” set out on the homepage of the Respondent’s web sites, is not sufficient to avoid a likelihood of confusion.

The Complainant seeks the transfer of the disputed domain names.

B. Respondent

The Respondent alleges that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

- The Complainant does not own the trademarks “eurexchange” or “exchange”.

- There exist several registered trademarks containing the word “eurex”, which are very similar to the Complainant’s EUREX trademark.

- “Eurexchange” is a generic term; it is an unequivocal phonetic and written contraction of “European Exchange” and could belong to any European stock market and to any web site which would have the scope to facilitate generic information on European exchanges. The Respondent was legitimate to register domain names easy to remember to host his web sites, even if the related domain names have no similarity with his own name.

- The web sites associated with the disputed domain names offer information and services which have no similarity with Eurex’s services, although there was a link to the Eurex market on the web sites.

- The homepage of the Respondent’s web sites contains the mention “This site is not affiliated in any way with Eurex European Derivatives Exchange”.

In connection with legitimate interests, the Respondent submits the following:

- The marks “eurexchange” and “exchange” are not registered as trademarks and the Complainant does not have more rights or legitimate interests in respect of the disputed domain names than the Respondent.

- The letters “eurex” are very common on the Internet and there are numerous web sites containing “eurex” in their domain name.

- The Respondent alleges a legitimate, loyal and non-commercial use of his domain names, without any intention to attract Internet users, for commercial gain, to his web sites by an improper use of the Complainant’s trademark. The Respondent alleges that his web sites provided free information on weather forecast, tourism in Valencia and Spain, world news and his personal pictorial work.

- The Respondent disputes the Complainant’s submission that the Respondent’s web sites would probably become “pay per click” web sites.

- The domain names were not registered with the scope of selling them to the Respondent or to a competitor, or to harm in any other way the Complainant’s interests. The Respondent alleges that the domain names were acquired to satisfy his interest in web authoring, based on his 30-year professional experience in Banking Management, with specialization in the stock markets and finance services, as well as his artistic experience and academic education.

Finally, the Respondent submits that the disputed domain names have not been registered or used in bad faith:

- The domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant or to a competitor with an “abusive benefit”. The Respondent has never attempted to offer the domain names for sale above their costs.

- Concerning use of the domain names, the Respondent alleges that his web sites have not been used actively since December 2004. The Respondent explains that he is working on the development of his web sites in order to extend them to other sectors (tourism information; weather forecast; dictionary on financial terms and investment). Because of other professional occupations, the Respondent explains that the web sites will not be accessible before December 2005.

- The Respondent unilaterally commits neither to use the “Eurex” term nor to make links to the Eurex sites in his web sites in the future.

- The Respondent cites the Charter of Fundamental Rights of the European Union and specifically refers to article 11 (Freedom of expression), article 17 (Right to property), article 20 (Equality before the law), article 48 (Presumption of innocence and right of defense), article 49.3 (severity of penalties must not be disproportionate to the criminal offence).

On this basis, the Respondent requests that the Complaint be dismissed.

6. Preliminary Question

After the Response was received, the Complainant filed an unsolicited submission dated May 9, 2005. In response to this submission, the Respondent also filed an unsolicited submission on May 14, 2005. While the Rules provide that the Panel may request further submissions (see paragraph 12 of the Rules), they make no provision for a party to file an additional submission without leave of the Panel. The latter has a broad discretion in deciding whether or not to accept unsolicited submissions.

The principles which should be applied by the Panel in exercising such discretion have been considered in many cases under the Policy and Rules (See, e.g. Harrods Ltd v. Brad Shaw, WIPO Case No. D2004-0411 The E.W. Scripps company v. Cynologic Industries, WIPO Case No. D2003-0447; Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792). These principles are based on the purpose of the Policy and Rules of providing an expeditious procedure for determining a certain type of domain name disputes.

As a rule, additional evidence or submissions should only be admitted in exceptional circumstances, such as when additional submissions are necessary to reply to the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission or to rebut arguments by the respondent that the complainant could not reasonably have anticipated. On the other hand, panels have repeatedly stated that further submissions are neither needed nor acceptable where the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its complaint, nor does the response appear to have submitted arguments that the complainant could not reasonably have anticipated, and there being no other exceptional circumstances that would justify the submission of a further submission (The Toronto-Dominion Bank v. Boris Kerpacev, WIPO Case No. D2000-1571).

In the present case, the Panel considers that there are no grounds for admitting the Complainant’s unsolicited submission, which does not address issues raised in the Response that could not reasonably have been anticipated in the Complaint (See, e.g., Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 and Scorpions Musikproductions und Verlagsgesellschaft MBH v. Alberta Hot Rods, WIPO Case No. D2001-0787). Since the Complainant’s submission of May 9, 2005, is not accepted, the Panel shall also disregard the Respondent’s unsolicited answer to this submission dated May 14, 2005.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that each of the three following elements are satisfied:

1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

2. The Respondent has no rights or legitimate interests in respect of the domain names (see below, section B), and

3. The domain names have been registered and are being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the domain names identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence, in the form of electronic excerpts of trademark registrars issued by the German Patent and Trademarks Office, the World Intellectual Property Organization and the Office for Harmonization in the Internal Market’s CTM Online, that it is the owner of several trademarks, registered as German, Community and International trademarks consisting of or containing the word “Eurex”.

Concerning the second issue, the disputed domain names and the Complainant’s trademarks are not identical. The question is therefore whether they are confusingly similar under the Policy. In this respect, the Panel finds that the domain names are confusingly similar to the Complainant’s EUREX trademarks.

When comparing a domain name and a trademark under the Policy, the panel must focus on the second-level domain (in this case “eurexchange”) and disregard the first-level domain (in this case “.org” and “.info”), which has no distinctive character.

The domain names at issue incorporate in full the Complainant’s EUREX trademark. This trademark is a coined word which can be understood as the contraction of the English words “european” and “exchange” and is distinctive. Panels have often found that a domain name that incorporates a distinctive mark in its entirety is confusingly similar to the mark (See, e.g., EAuto L.L.C. v. Triple S. Auto Parts, WIPO Case No.  D2000-0047). It is of course possible that a domain name including a distinctive mark and additional words may not be confusingly similar to the trademark, for example if the additional words alter the sense of the distinctive mark. However, this is not the case here. On the contrary, the domain names only add to the Complainant’s trademark the term “change”. The Panel considers that this addition, which plays on the words “eurex” and “(ex)change”, is not sufficient to distinguish the domain names from the Complainant’s EUREX trademark.

The Respondent’s arguments do not establish that the disputed domain names are not confusingly similar to the Complainant’s marks. The fact that the terms “eurexchange” and “exchange” have not been registered as trademarks by the Complainant is irrelevant, as it is sufficient that the domain names be confusingly similar to the Complainant’s registered trademark EUREX. Further, the Complainant is entitled to the presumption of validity conferred by the registration of its trademarks, in particular regarding its distinctive character (See, e.g., Argyle Diamond Sales Limited v. Van Daaz, WIPO Case No. D2001-1323). In addition, the mere fact that there exist other second-level domain names and trademarks including the word “eurex” is not sufficient to avoid the similarity between the disputed domain names and the Complainant’s trademarks. Finally, the presence of a disclaimer on the Respondent’s web sites has no incidence on the issue of the similarity of the domain names and the trademarks under the Policy, which is based on a comparison of the two signs (see, e.g., Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367).

The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names.

It is notoriously difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fides offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names, for the following reasons.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Despite this lack of an authorization, the Respondent prominently displayed the Complainant’s logo, i.e. an identical reproduction of the Complainant’s EUREX word/device mark, on its homepage, together with a link to the official EUREX Internet web site accessible under the domain name <eurexchange.com>. Confronted with the Respondent’s web site, it is highly likely that Internet users would assume that the domain names and related web sites are operated by the Complainant, or at least with the Complainant’s consent, which is not the case. In addition, the Respondent provided other links to financial web sites, some of which compete with the Complainant’s business. In accordance with these elements, the Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of the domain names.

Concerning his legitimate interests, the Respondent alleged that he should be allowed to use a contraction of two generic and descriptive words (“European” and “exchange” for “eurexchange”) to offer, amongst others, services in the European exchanges field. The Panel considers that the mere fact that “eurexchange” is a contraction of “European” and “exchange” is not sufficient to establish the Respondent’s legitimate interests, in particular where, as set out above, the use that the Respondent made of the domain names was not related to a bona fide offering of goods or services. On the contrary, the record shows that the domain names were chosen, registered and used because of their similarity with the Complainant’s EUREX trademark and with the domain name of the official EUREX web site (<eurexchange.com>).

Finally, there is no evidence that, prior to the dispute, the Respondent registered or used the names “Eurex” or “Eurexchange” as a trademark or otherwise, or was at any time commonly known by the disputed domain names.

In accordance with the elements set out above, the Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain names were registered and are being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:

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

The Respondent stated in his Response that he has 30 years of professional experience in banking, with a specialization in the “stock markets and financial”. Therefore, when the Respondent registered the disputed domain names in 2004, he certainly knew EUREX as a provider of goods and services in the field of financial affairs, as well as the <eurexchange.com> web site. Nevertheless, the Respondent prominently displayed, without authorization, the Complainant’s logo, i.e. an identical reproduction of the EUREX word/device mark, on its homepage. He also included a link to the official EUREX Internet web site “www.eurexchange.com”. The Panel considers that this is sufficient to establish that the Respondent knew of the Complainant’s trademark when he registered the domain names and that, by registering and using the domain names, Respondent deliberately intended to attract for commercial gain Internet users to his web sites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s web sites.

In addition, the Panel considers that the indication “this site is not affiliated in any way with Eurex European Derivatives Exchange”, set out in small print at the bottom of the Respondent’s homepage, is not sufficient to avoid a finding of bad faith under the Policy. In particular, this disclaimer is only visible after the Internet user has accessed the Respondent’s web site. Such a disclaimer is ineffective to avoid initial interest confusion (See Sharman License Holdings, Limited v. KazaaLite.com Inc., WIPO Case No. D2004-0402).

The Panel therefore finds that the disputed domain names have been registered and are used in bad faith.

8. 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 <eurexchange.org> and <eurexchange.info> be transferred to the Complainant.

Fabrizio La Spada
Sole Panelist

Dated: May 23, 2005