Complainant is IG Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is R. S., Slovakia.
The disputed domain name <wwwiggroup.com> (the “Domain Name”) is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 11, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 11, 2012, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012, which was extended until November 12, 2012. The Respondent sent an email communication to the Center on October 12, 2012, and a series of emails between October 20, 2012 and October 26, 2012. The complete Response was filed with the Center on October 26, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 12, 2012. 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.
On December 5, 2012, the Panel issued Procedural Order No. 1 which, pursuant to paragraph 10 of the Rules, requested the following from the parties:
1. From Complainant: Evidence and authority, rather than mere assertion, supporting the allegation that Respondent had Complainant’s marks IG or IG GROUP in mind when registering the Domain Name. A written narrative not exceeding three pages may accompany this submission.
2. From Respondent: Sworn statements (notarized and sworn under penalty of perjury), from both Respondent and the person on whose behalf Respondent purportedly registered the Domain Name, confirming or denying his actual awareness of the existence of Complainant’s IG and IG GROUP marks.
3. From Respondent: Evidence of Respondent’s actual preparations to use the Domain Name in the manner asserted in the Response and other submissions from Respondent. Respondent may redact any information that it considers proprietary and confidential.
Both parties submitted responses to Administrative Procedural Order No. 1 on December 12, 2012.
Complainant, founded in the United Kingdom in 1974, is a provider of financial derivatives trading services. Complainant had an annual turnover of more than GBP 366 million last year. Complainant maintains offices in numerous countries and has tens of thousands of clients. Complainant provides online trading services, and does so under a family of marks including IG GROUP. Complainant has registered several “IG”-formative marks in the United Kingdom and elsewhere. According to the record, the mark IG GROUP itself is registered in the United Kingdom but not in Slovakia, Respondent’s country. Complainant also holds a large portfolio of domain names consisting of “IG,” including <iggroup.com>. The website corresponding to that domain name advertises Complainant as a “world leader in financial derivatives trading”.
The Domain Name was registered on July 17, 2012. According to Respondent, he registered the Domain Name on behalf of a Swiss client who is pursuing a business plan, for which he and Respondent have invested hundreds of hours. Respondent claims to have created numerous scripts and applications for the forthcoming website, but he has not provided any specific evidence of these alleged business preparations.
Respondent, who admits that his English is not strong, claims that the Domain Name was selected because it corresponds to “World Wide Web Information Gain Group”. He also states that his first choice would have been “wwwigengine”, but his client preferred “wwwiggroup” as a name. Respondent claims that his client has engaged a lawyer to help set up and pursue the business which has attracted some investors, but no specific evidence on the record supports these assertions.
On August 29, 2012, Complainant’s representative wrote a cease-and-desist letter to Respondent. In that letter, Complainant asserted rights to the mark IG, but made no reference to the mark IG GROUP. On September 3, 2012, Respondent responded by an e-mail in which he claimed that his client was on holiday and inaccessible until his return. Respondent also stated that the abbreviation “wwwig” is “very generic” with 15,200 Google search results. In that missive, Respondent also laid out the alleged business plan of his client, as summarized above. In addition, Respondent wrote: “I suspected that we will have problem with this domain name, because we have unusual high traffic for domain name without content – from 60 up to 180 unique IP addresses per month”. According to Complainant, this statement is proof that Respondent knew he was infringing on someone’s mark.
Finally, in his initial e-mail response Respondent indicated that he had “turned off advertising system” for the Domain Name. In the event, the Domain Name continued to resolve to a portal page with general advertising links related to television, sports, and the Angry Birds game. The website does not appear to contain any links related to financial derivatives trading.
On September 13, 2012, Respondent sent Complainant a second e-mail, this time advising of his client’s return from holiday and his “angry” reaction to the cease-and-desist letter. Respondent conveyed a message from his alleged client, who repeated much of what Respondent had already set forth in his first responsive e-mail.
The salient points raised by Complainant are set forth in the previous section or will be set forth below in the appropriate places of the Discussion and Findings section.
The salient facts alleged by Respondent are set forth in the previous section, and the relevant arguments raised by Respondent will be set forth below in the appropriate places of the Discussion and Findings section. The Panel also observes here that many of Respondent’s arguments are not relevant to the single issue before the Panel in this proceeding, and, as such, will not be recorded here.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
There is no dispute that Complainant holds rights in the mark IG GROUP through registration and use. The Domain Name incorporates Complainant’s mark in its entirety, and appends the letters “www” to the beginning of the mark to form the Domain Name. Several prior decisions under the Policy have held that a “wwwmark.com” domain name is held to be confusingly similar to the mark in question. See, e.g., Pig Improvement Co. v. Platinum Net, WIPO Case No. D2000-1594.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the 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 fide 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.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no actual evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent’s website contains sponsored links.
Prior to the Panel’s issuance of Procedural Order No. 1, Respondent had essentially urged the Panel to accept his bona fides without a shred of corroborative evidence. For instance, although Respondent claims that his client has engaged a lawyer in connection with the business venture, there was no affidavit from this alleged lawyer. Also, Respondent claimed in correspondence to Complainant that he had shut down the sponsored links at the website, but in fact the links remained there at the time this proceeding was commenced.
In response to Administrative Panel Procedural Order No. 1, Respondent submitted a few screen shots concerning the Domain Name. These screen shots do not prove any actual efforts by Respondent to use the Domain Name in accordance with the plans alleged by Respondent. Further, these screen shots do not prove Respondent’s activities at any particular point in time; they could have been generated after the issuance of Administrative Panel Procedural Order No. 1. As such, they are of little or no probative value.
In short, even after Respondent’s latest submissions, there is simply nothing palpable for the Panel to conclude that Respondent has rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The parties’ responses to Administrative Panel Procedural Order No. 1 bear significantly on the “bad faith” element under the Policy. Both parties’ initial submissions were somewhat deficient, and further inquiry was required to enable the Panel to make a decision, based on a balance of probabilities, about a critical question: Did Respondent – or his client, whose identity has not been disclosed but on whose behalf Respondent claims to be working – have Complainant or its marks in mind at the time he registered the Domain Name.
First, the Panel asked both Respondent and “the person on whose behalf Respondent purportedly registered the Domain Name” to submit a sworn statement confirming or denying his actual awareness of the existence of Complainant’s IG or IG GROUP marks. Respondent submitted a notarized statement denying any knowledge of these marks at the time he registered the Domain Name. However, no statement was submitted by the person on whose behalf Respondent claims to have registered the Domain Name. In Respondent’s words, “the originator does not give me right to uncover his/her identity”. There may be valid reasons for Respondent’s alleged client to withhold his identity, but the Panel has not been given an explanation. The refusal of Respondent’s purported principal to issue a sworn denial of knowledge of Complainant’s marks permits the Panel to draw an inference – albeit not a strong one – that Respondent’s principal probably had Complainant’s marks in mind when Respondent registered the Domain Name.
Second, Complainant was asked to submit actual evidence “supporting the allegation that Respondent had Complainant’s marks IG or IG GROUP in mind when registering the Domain Name”. The most significant information provided by Complainant in response to Administrative Panel Procedural Order No. 1 was a list of other domain names held by Respondent, including <www-tandberg.com>, <wwwfxprimus.com>, <wwwmigbank.com>, and <wwwicbc-ltd.com>. These domain names appear to correspond to or contain trademarks. Indeed, the latter domain name corresponds to one of the world’s largest banks, the Industrial and Commercial Bank of China (ICBC), which maintains a website at the domain name <icbc-ltd.com>. It also bears noting that Respondent holds other domain names including <ibcb-ltd.com> and <icbc-ldt.com>, both of which appear to reflect typographical errors pertaining to the ICBC’s mark.
Respondent sent an unsolicited reply to Complainant’s submission on December 13, 2012. That reply did not deny that Respondent was the registrant of these other domain names, or offer any explanation why he had legitimately registered these domain names. In his response to Procedural Order No. 1, Respondent had stated: “It is my common practice to ensure myself, that domain name is not identical with trademark”. The veracity of this statement is called into doubt by the existence of the domain names Complainant identified above. Indeed, the list of other domain names held by Respondent shows a pattern of typosquatting. The Panel concludes, on a balance of probabilities, that Respondent is in bad faith under paragraph 4(b)(ii) of the Policy.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wwwiggroup.com> be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: December 17, 2012