The Complainant is BGC Partners, Inc. and BGC Partners, L.P. of New York, New York, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondents are BGC CHINA of Shanghai, China; BGC partners of New York, New York, US; Domains By Proxy, LLC of Scottsdale, Arizona, US.
The disputed domain name <bgcmarket.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. The disputed domain name <bgcmarkets.com> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September27, 2013. On September 27, 2013, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On September 28, 2013, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name
<bgcmarkets.com> which differed from the named Respondent, Domains By Proxy, LLC, and contact information in the Complaint. On October 8, 2013, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent BGC CHINA is listed as the registrant and providing the contact details.
The Center sent an email communication to the Complainant on October 8, 2013 providing the registrant and contact information disclosed by GoDaddy.com, LLC for the disputed domain name <bgcmarkets.com>, and inviting the Complainant to submit an amendment to the Complaint and provide further arguments regarding consolidation (if any). On the same day, the Center also sent an email communication to the parties in both Chinese and English regarding the language of the proceeding for the disputed domain name <bgcmarket.com>. The Complainant filed an amended Complaint and requested English be the language of the proceeding on October 13, 2013. The Respondent did not comment on the language of the proceeding by the specified due date.
On October 10 and 14, 2013, the Center received email communications from the Respondent in respect of the disputed domain name <bgcmarkets.com> rejecting the Complainant’s consolidation request and the Complaint filed by the Complainant. The Center acknowledged receipt of these email communications on October 10 and 14, 2013.
On October 16, 2013, the Center informed the parties that (1) there would appear to be at least prima facie grounds sufficient to warrant putting the Complainant’s request for consolidation before a Panel; (2) the Center would accordingly proceed with this administrative proceeding on that basis; and (3) future case communications would be duly forwarded to the contact information for all identified registrants, and a Response (or Responses) would be accepted by the Center from any who wished to submit a reply to the Complaint, and placed before the Panel for consideration in due course.
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 Respondents of the Complaint, and the proceedings commenced on October 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2013.
The Center did not receive any formal Response by the specified Response due date. However, the Center received an email communication from the Respondent BGC partners in respect of the disputed domain name <bgcmarkets.com> stating the Respondent was not associated with the disputed domain name <bgcmarket.com> on October 16, 2013. A further email communication was received from the same Respondent on November 5, 2013 stating “[a]bout the website "www.bgcmarkets.com" and the related company, that we bought it from a Singapore businessman in 2013. Before this dispute occurring, we haven’t known anything that the website was established as similar as the applicant’s website. After our careful consideration, we decided to close this website and delete all the contents of the website”. The Center acknowledged receipt of these email communications.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 13, 2013. 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 Complainant is a brokerage company incorporated in the State of Delaware in the US in the financial and commercial real estate markets and the owner of numerous trade mark registrations in the US and worldwide, including in China, for the trade mark BGC (the “Trade Mark”).
The Respondent BGC CHINA appears to be an entity based in China. The Respondent BGC partners seems to be located in the US.
The disputed domain name <bgcmarket.com> was registered on August 29, 2013.
The disputed domain name <bgcmarkets.com> was registered on February 27, 2013.
The Complainant made the following submissions in the Complaint:
The Complainant is a leading global brokerage company primarily serving the wholesale financial and commercial real estate markets, and annually conducts over USD 200 trillion in transactions. The Complainant is one of the world’s leading inter-dealer brokers, providing integrated voice and electronic services to wholesale market participants across the globe. The Complainant has approximately 7,000 employees in the US and more than 30 financial centers around the world. The Complainant’s customers include many of the world’s largest banks, hedge funds, governments and investment firms. The Complainant has been using the Trade Mark since 2004.
The disputed domain names are confusingly similar to the Trade Mark. They contain the Trade Mark in its entirety together with the non-distinctive words “market” or “markets”.
The Respondents have no rights or legitimate interests in the disputed domain names and have not been authorised by the Complainant to use the Trade Mark. The disputed domain names have been used in respect of websites which feature prominently the Trade Mark, logos and banners of the Complainant, contain one of the New York office addresses of the Complainant, and apparently offer the same services as those offered by the Complainant under the Trade Mark (the “Website(s)”). Through using the disputed domain names in respect of the Websites the Respondents are seeking to pass itself of as the Complainant or an entity sponsored, authorised or otherwise approved by the Complainant.
The use of the disputed domain names by the Respondents in this manner amounts to registration and use in bad faith.
The Respondents did not file a Response and did not provide any meaningful reply to the Complainant’s contentions, other than requesting, in the case of the disputed domain name <bgcmarkets.com>, that the Complaint should be dismissed, and offering to take down the content of the relevant Website.
The language of the registration agreement for the disputed domain name <bgcmarket.com> is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondents to the effect that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The disputed domain name <bgcmarkets.com> was registered using a registrar based in the US;
(2) The disputed domain names contain the English words “market” or “markets” together with the Complainant’s English language Trade Mark;
(3) In addition to Chinese language pages, the Websites contain English language pages and pop-up dialogue boxes, feature the English language logos and banners of the Complainant and third party trade mark owners, and an English language office address in the US;
(4) The Respondent in respect of the disputed domain name <bgcmarkets.com> has communicated with the Center in English;
(5) Requiring the Complainant to translate the Complaint into Chinese would be burdensome and would cause undue delay.
The Respondents did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondents are conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The arguments relied upon by the Complainant in support of its consolidation request include:
(1) The Websites contain almost identical content;
(2) The Website for <bgcmarket.com> contains a direct link to the Website for <bgcmarkets.com>;
(3) The Website for <bgcmarket.com> contains the email address “[…]@bgcmarkets.com”;
(4) Both Websites contain one of the New York city office addresses of the Complainant;
(5) Both Websites use Internet Service Providers in Hong Kong, China; and
(6) The disputed domain names were registered within six months of each other.
The Complainant submits that the disputed domain names are under the control of the same person or entity and/or are otherwise related to each other.
The Respondents did not file a Response. The Center received an email communication from the Respondent in respect of the disputed domain name <bgcmarkets.com> requesting the Center to reject the Complainant’s consolidation request, but without providing any further submissions or any supporting evidence.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue. Accordingly, the Respondents shall be referred to as the Respondent hereinafter.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by almost 10 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The disputed domain names comprise the Trade Mark in its entirety together with the non-distinctive words “market” or “markets”, which does not, in the Panel’s view, serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
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 disputed domain names:
i) Before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by almost 10 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 disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain names have been used in respect of the Websites, which make unauthorised use of the Trade Mark and other logos of the Complainant, and which offer the same services as offered by the Complainant under the Trade Mark.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on the Respondent’s websites or locations.
The Respondent has been using the disputed domain names in respect of the Websites, which have not been authorised by the Complainant, and which feature prominently the Trade Mark and logos of the Complainant, and offers the same services as those offered by the Complainant under the Trade Mark worldwide, including in China, where the Respondent is based. This is clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <bgcmarket.com> and <bgcmarkets.com>be transferred to the Complainant BGC Partners, L.P.
Sebastian M.W. Hughes
Sole Panelist
Dated: November 27, 2013