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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

London Stock Exchange Plc v. Timothy Golovin, Golovins Consulting Firm LLC

Case No. D2021-4283

1. The Parties

The Complainant is London Stock Exchange Plc, United Kingdom, represented by Gowling WLG (UK) LLP, United Kingdom.

The Respondent is Timothy Golovin, Golovins Consulting Firm LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain names <londonstockexchanges.net> and <londonstockexchanges.org> 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 December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2021, 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 the Complainant on January 4, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 5, 2022.

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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022.

The Center appointed Alistair Payne as the sole panelist in this matter on February 9, 2022. 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 is a public limited company based in the United Kingdom which has operated the stock exchange in London for over 200 years. In 2007, the Complainant became part of the London Stock Exchange Group, when it merged with the Milan Stock Exchange, Borsa Italiana. The Complainant enables its customers to issue securities and facilitates trading in them on the Complainant’s platforms under the LONDON STOCK EXCHANGE brand. The Complainant supplies prices, news, and other information to the financial community internationally and the Complainant’s Group has significant operations across Europe, the Middle East, Africa, North America, Latin America, and Asia Pacific, and employs 25,000 people globally.

The Complainant owns a number of registered trademarks for the LONDON STOCK EXCHANGE including European Union figurative trade mark number 001665983 registered on November 15, 2001 and United States figurative trade mark number 2422403 which was registered on January 23, 2001 and European Union word mark number 0918098225 for LONDON STOCK EXCHANGE registered on January 11, 2020. The Complainant owns the domain name “www.londonstockexchange.com” from which it operates its official website.

The disputed domain names were both registered on September 15, 2021 and at the date of filing both redirected to the Complainant’s official website at “www.londonstockexchange.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the LONDON STOCK EXCHANGE mark as noted above. It says that each of the disputed domain names are identical or highly similar to its LONDON STOCK EXCHANGE trade mark with the only difference being the plural “s” added to form “londonstockexchanges”. It says that it is well established that the addition of “s” alone is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s LONDON STOCK EXCHANGE mark and that there is nothing about the addition of the “s” which would dispel confusion with the LONDON STOCK EXCHANGE mark.

The Complainant submits that the Respondent (whether as an individual, business, or part or whole of any organisation) has not been commonly known by LONDON STOCK EXCHANGE and that this name or mark solely denotes the Complainant and its products and services. It says further that the Respondent has no registered trade mark or service mark in LONDON STOCK EXCHANGE, nor has it registered such a mark at the UKIPO, EUIPO, or at any other publicly searchable register in the world. The Complainant confirms that it has no relationship with the Respondent and has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register any domain name incorporating the LONDON STOCK EXCHANGE mark.

According to the Complainant, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, either of the disputed domain names in connection with a bona fide offering of goods or services and it says that the Respondent is neither making a legitimate noncommercial nor a fair use of the disputed domain names without intent for future commercial gain. It notes that at present the disputed domain names both redirect to the Complainant’s own website at <londonstockexchange.com>. It has also submitted evidence that on September 18, 2021 the Respondent,sent an email confirming that both disputed domain names were for sale. This was in response to the registrar’s communication to the Respondent notifying him of a potential infringement complaint.

The Complainant says that the LONDON STOCK EXCHANGE mark is well known across the United Kingdom, the European Union, and worldwide, and that in the circumstances it is impossible that the Respondent could not have known of its mark and business when registering the disputed domain names which differ from it only by the addition of an “s”. It says that registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark, such as the LONDON STOCK EXCHANGE creates a presumption of bad faith and that the registration of the disputed domain names by the Respondent amounts to an opportunistic attempt to benefit from the well-known nature of the LONDON STOCK EXCHANGE trade mark.

The Complainant maintains that the re-direction of the disputed domain names to its own website has been set up by the Respondent to gain trust from Internet users in the disputed domain names so that, for example, users will then cache the disputed domain names in browsers and whitelists with the intention of using such trust to redirect Internet users to the Respondent’s website for commercial gain. The risks to Internet users arising from the deceptive nature of the disputed domain names are all the more severe, says the Complainant, because of the nature of its business operating financial products and services. According to the Complainant this conduct falls within the bad faith conduct described in paragraph 4(b)(iv) of the Policy on the basis that the act of re-directing the disputed domain names to the Complainant’s own website constitutes evidence to support a finding of bad faith (see paragraph 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”))).

Finally, the Complainant notes that the panel in London Stock Exchange Plc. v. Timothy Golovin, Golovins Consulting Firm LLC, WIPO Case No. D2021-2176found that the very similar domain name (“.com” being the only difference) had been registered and used in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. On January 7, 2022, the Respondent sent three emails to the Center, requesting information from the Center in regards to the proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in its LONDON STOCK EXCHANGE mark.

Each of the disputed domain names incorporate the LONDON STOCK EXCHANGE trade mark in its entirety before the top level domain name element and only differ from the Complainant’s mark in that they each include a plural “s”. The Panel finds that this does not prevent a finding of confusing similarity and as a result each of the disputed domain names are confusingly similar to the Complainant’s registered trade mark rights and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has not been commonly known by “LONDON STOCK EXCHANGE” and that this name or mark solely denotes the Complainant and its products and services. It has confirmed that the Respondent has no registered trade mark or service mark in LONDON STOCK EXCHANGE, nor has it registered such a mark at the UKIPO, EUIPO, or at any other publicly searchable register in the world. The Complainant has also confirmed that it has no relationship with the Respondent and that it has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register any domain name incorporating the LONDON STOCK EXCHANGE mark.

The Complainant has submitted that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, either of the disputed domain names in connection with a bona fide offering of goods or services and it says that in re-directing the disputed domain names to the Complainant’s own website at <londonstockexchange.com> the Respondent is neither making a legitimate noncommercial nor a fair use of the disputed domain names without intent for future commercial gain. Further, it appears from the email evidence filed by the Complainant that it is very unlikely that the Respondent has any intention of using the disputed domain names in relation to any bona fide offering of goods and services in circumstances that it expressly confirmed that both of the disputed domain names were for sale.

In all the circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Complainant’s case has not been rebutted by the Respondent the Panel finds that the Complainant has successfully made out its case and that the Complaint succeeds under this element of the Policy

C. Registered and Used in Bad Faith

The disputed domain names were both registered on September 15, 2021 which has a dual significance. Firstly, this date is many years after the earliest of the Complainant’s trade mark registrations and approximately two hundred years after the Complainant or its predecessors first established their business of the same name. The Panel accepts that the LONDON STOCK EXCHANGE mark is extremely well reputed both in the United Kingdom and internationally. Secondly, the date of registration of the disputed domain names is only 9 days after the date of the decision in London Stock Exchange Plc. v. Timothy Golovin, Golovins Consulting Firm LLC, WIPO Case No. D2021-2176, in which the panel found that the same respondent had registered and used the identical domain name (except for the top level element)“.com” in bad faith. It follows that the Respondent was indeed well aware of the Complainant and its business and trade mark when it registered each of the disputed domain names and it appears very likely based on the timing that it proceeded with registration of the disputed domain names as a consequence of the panel order for transfer of the “.com” version of the disputed domain names to the Complainant.

Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In addition, evidence under paragraph 4(b)(iv) that a respondent has redirected the domain name to the complainant’s website is evidence of use in bad faith (see paragraph 3.1.4 of the WIPO Overview).

In this case the Respondent, with flagrant disregard to the finding of registration and use in bad faith by the panel in WIPO Case No.D2021-2176 supra, has registered the disputed domain names incorporating the Complainant’s extremely widely known mark and has used them to re-direct Internet users to the Complainant’s own website. There is a very strong inference here that the Respondent did this as a reaction and possibly in retribution for the earlier decision that transferred the“.com” version of the domain names. Further, the Respondent confirmed in its email that both the disputed domain names were for sale while they were re-directed to the Complainant’s website, which is indicative that the Respondent’s motivation is for its own commercial gain.

The Respondent’s conduct in registering and using the disputed domain names in this way is clearly an example of blatant cybersquatting under the Policy. The Panel finds that these circumstances fall under paragraph 4(b)(iv) of the Policy as described above and also under paragraph 4(b)(ii) of the Policy as it appears that the Respondent has indeed sought to prevent the Complainant from reflecting its trade mark in each of the disputed domain names and in doing so it has engaged in a pattern of conduct following on from the decision in WIPO Case No. D2021-2176 supra. These findings amount to evidence of both registration and use in bad faith and therefore the Complaint also succeeds under this 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 <londonstockexchanges.net> and <londonstockexchanges.org> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: February 23, 2022

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