WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ActivTrades Plc v. Domains By Proxy LLC / Planet Web Holding Ltd, Kevin Dana, activ markets

Case No. D2016-0212

1. The Parties

Complainant is ActivTrades Plc of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”), represented by Hiddleston Trade Marks, United Kingdom.

Respondent is Domains By Proxy LLC of Scottsdale, Arizona, United States of America / Planet Web Holding Ltd, Kevin Dana, Activ Markets of Herzilya, Israel, represented by Lex Partner LLP of France and Turkey.

2. The Domain Names and Registrar

The Disputed Domain Names <activmarkets.com> and <activmarketstrading.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2016. On February 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 3, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 10, 2016, stating that the Complaint exceeded the word limit specified in the Supplemental Rules, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 15, 2016.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016.

The Center received several email communications from the Parties on February 18 and 25, 2016. On March 8, 2016, further to Complainant’s request, the Center suspended the proceeding. The Center received several email communications from the Parties on April 8, 2016. On April 11, 2016, the Center reinstituted the proceedings, further to Complainant’s request. The Center received another email communication from Respondent on April 15, 2016.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 25, 2016. 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

Complainant states that, since at least 2001, it has “operate[d] an online trading platform for customers to sell and purchase shares, stocks and other securities on financial markets.” Complainant further states that it “was one of the first online trading platforms for trading stocks and shares and has received a substantial amount of press coverage and awards within the financial field.” Complainant further states that it operates a website using the domain name <activtrades.com>, as well as websites using the same second-level domain (i.e., “activtrades”) with the following country-code top level domains: “.uk”, “.de”, “.es”, “.it”, “.ru”, “.cn”, “.hk”, “.tw”, “.bg”, “.ae”, “.hu”, “.nl”, “.pt” and “.fr”.

Complainant further states, and provides evidence to support, that it is the owner of the following trademark registrations for the mark ACTIVTRADES (the “ACTIVTRADES Trademark”):

- Community Trademark Reg. No. 004411815 (registered May 18, 2006)

- International Trademark Reg. No. 1048755 (registered June 23, 2010)

- Community Trademark Reg. No. 12081071 (registered January 16, 2014)

- U.K. Trademark Reg. No. 3018283 (registered November 15, 2013)

The Disputed Domain Names were registered on April 24, 2015 (<activmarkets.com>) and May 22, 2015 (<activmarketstrading.com>).

Complainant further states, and provides evidence to support, that the Disputed Domain Names are used in connection with websites that provide financial services and that contain text, images, layout and colors that are also used on Complainant’s websites.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

Complainant has rights in and to the ACTIVTRADES Trademark as a result of the trademark registrations cited above. Complainant further contends that the Disputed Domain Names are confusingly similar to the ACTIVTRADES Trademark because they “contain[] the dominant and distinctive element of the earlier trade marks” and the terms “markets” and “trading” are “completely descriptive of ‘the trading of shares and stocks on a financial market’.”

Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “[t]he Domain Names post-date the Complainant’s first use and registration of the Trade Mark ACTIVTRADES by over ten years”; “[t]here does not appear to be any use of ACTIVMARKETS or ACTIVMARKETSTRADING prior to the registration of the Domain Names”; “Respondents’ websites mirror a large number of the features of the Complainant’s website at www.activtrades.com”; and “[w]e have so far identified at least 11 instances where the Respondents appear to have copied significant and substantial portions of text from the Complainant’s website at www.activtrades.com.”

The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “Respondents have clearly copied text directly from the Complainant’s website at www.activtrades.com” and, therefore, “it is clear that the Respondents are attempting to trade off the reputation of the Complainant in its trade mark and website to lead to confusion to encourage customers to believe that its website is connected with the Complainant”; and “there is a real risk that customers for the [s]ervices provided by the Complainant may be confused into believing that the Respondents’ website is connected with that of the Complainant.”

B. Respondent

Respondent did not reply to Complainant’s contentions. The emails referenced above, sent by Respondent’s counsel to the Center, do not address any of Complainant’s contentions and do not constitute a Response.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ACTIVTRADES Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the ACTIVTRADES Trademark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “activmarkets” and “activmarketstrading”), as it is well established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)

Although the Disputed Domain Names do not contain the ACTIVTRADES Trademark in its entirety, they are each “confusingly similar to the dominant name in the Complainant’s trademarks.” La Quinta Worldwide, L.L.C. v. PrivacyProtect.org / Pantages, Inc., WIPO Case No. D2011-1530. Further, the difference between the word “TRADE” in the ACTIVTRADES Trademark and the word “trading” in the Disputed Domain Name <activmarketstrading.com> is minimal, given that they contain the same prefix and are essentially different forms of the same word. Finally, substitution of the word “markets” in the Disputed Domain Name for the word “TRADES” in the ACTIVTRADES Trademark is a difference that does not eliminate confusing similarity given that these words “are related.” Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, [t]he Domain Names post-date the Complainant’s first use and registration of the Trade Mark ACTIVTRADES by over ten years”; “[t]here does not appear to be any use of ACTIVMARKETS or ACTIVMARKETSTRADING prior to the registration of the Domain Names”; “Respondents’ websites mirror a large number of the features of the Complainant’s website at www.activtrades.com”; and “[w]e have so far identified at least 11 instances where the Respondents appear to have copied significant and substantial portions of text from the Complainant’s website at www.activtrades.com.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant argues that bad faith exists pursuant to Policy paragraphs 4(b)(iii) and 4(b)(iv), given that the Disputed Domain Names copy content from Complainant’s websites and are used in connection with similar services. Previous panels have found bad faith where, as here, a respondent’s website “shows a similar look and feel to the Complainant’s website” and “include[es] verbatim text from the Complainant’s website.” IG Group Limited v. Michael Smith / Domain Privacy Service FBO Registrant, WIPO Case No. D2016-0127.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

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, <activmarkets.com> and <activmarketstrading.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: May 3, 2016