The Complainant is Stoxx A.G. of Selnaustrasse 30, CH-8001 Zurich,
Switzerland.
The Respondent is Pandoro Golf S.L. of Urb. Andalucia del Mar, Casa 5,
Piso 411, Nueva Andalucia 29660, Spain.
2. The Domain Name and Registrar
The domain name at issue is <golfstoxx.com> and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint
on March 28, 2002, [electronic version] and on April 4, 2002
[hard copy]. The Center verified that the Complaint satisfies the formal requirements
of the ICANN 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is April 10, 2002.
On April 5, 2002 the Center transmitted via email to Network Solutions, Inc.
a request for registrar verification in connection with this case and on April 9, 2002,
Network Solutions, Inc. transmitted by email to the Center Network Solutions,
Inc.’s verification response confirming that the registrant is Pandolo Golf
S.L. and that the contact for both administrative and billing purposes is Simo
Mykkanen of Pandoro Golf S.L.
Having verified that the Complaint satisfied the formal requirements of the
Policy and the Rules, the Center transmitted on April 10, 2002, to
Respondent the Notification of Complaint and Commencement of the Administrative
Proceeding at the addresses provided by Network Solutions, Inc. The Center advised
that the Response was due by April 30, 2002. On the same day the Center
also transmitted by fax and by mail copies of the foregoing documents to Respondent
at the addresses provided by Network Solutions, Inc.
On April 4, 2002 the Center received an email from Simo Mykkanen asking for
information about this Complaint. Then on April 12, 2002, the Center
received a further email from Mr. Mykkanen requesting the Center to fax
a copy of the Complaint to his lawyer. The same day the Center asked Mr. Mykkanen
for particulars of his lawyer, confirming that the Notification of Complaint
and the Complaint had been sent to the lawyer's fax number given by Mr. Mykkanen.
On April 13, 2002, the Center received an email from Mr. Mykkanen
providing such particulars, but at the same time asking the Center not to send
any material to or make contact with his lawyer's office without his prior approval.
No further communication was subsequently received by the Center from the Respondent,
Mr. Mykkanen or his lawyer and no Response was received from the Respondent
by the due date of April 30, 2002.
Having received on May 8, 2002, Mr. David Perkins' Declaration of Impartiality
and Independence and his Statement of Acceptance, the Center transmitted to
the parties a Notification of Appointment of Administrative Panel and Projected
Decision Date, in which Mr. David Perkins was formally appointed as the Sole
Panelist. The Projected Decision Date was May 24, 2002. The Sole Panelist
finds that the Administrative Panel was properly constituted and appointed in
accordance with the Rules and the Supplemental Rules.
Having verified the communication records in the case file, the Administrative
Panel finds that the Center has discharged its responsibility under para. 2(a)
of the Rules "to employ reasonably available means calculated to achieve actual
notice to Respondents". Therefore, the Administrative Panel shall issue its
Decision based upon the Complaint, the Response, the Policy, the Rules and the
Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual background
4.1 The Complainant's Business
4.1.1 The Complainant Stoxx Ltd, is a joint venture between Deutsche Boerse
A.G.; Dow Jones & Company; Euronet Paris S.A.; and SWX Swiss Exchange. The Complainant developed the leading European regional equity indexes,
similar to the Dow Jones Index for US Stocks, the Nikkei Index for Japanese
Stocks and the DAX for German Stocks. The Complainant provides and services
the Dow Jones STOXX indexes, which were launched in February 1998, in advance
of European Monetary Union, the launch of the Euro and the creation of the Eurozone
on January 1, 1999. The indexes cover the European equity markets
in several complementary ways, namely by region, by size, by sector and by style.
The indexes have been designed and developed so that they are investable, tradable
and transparent.
4.1.3 SWX Swiss Exchange [a joint venture partner in the Complainant] registered
the <stoxx.com> domain name on February 11, 1998. It also registered
<stoxx.net> on January 31, 1998, and <stoxx.biz>
on April 2, 2002. The Complainant itself registered <stoxx.org>
on September 26, 2001. This information has been derived by the Panel
from WHOIS searches carried out for the purpose of preparing its decision in
this administrative proceeding.
Use of the Complainant's STOXX Trademarks
4.1.4 The Complaint states that the Complainant's STOXX trademarks [identified
in paragraph 4.1.2 above] are quoted in the trade press worldwide. The Complaint
exhibits an entry for STOXX in the 2001 edition of Brockhaus, a German Encyclopaedia.
The Complaint asserts that STOXX is a famous trademark and thereby entitled
to an increased scope of protection.
4.2 The Respondent
4.2.1 The Complaint exhibits an extract from the Respondent's website which
contains the following:
"Wellcome to GolfStoxx.com.
The Golf Share Exchange on the Internet.
GolfStoxx works like any other stock exchange, like those in Madrid, London
or New York.
The only difference is that GolfStoxx.com trades in shares of golf courses.
Our mission is to connect sellers and buyers of golf shares and keep records
of sellers and buyers as well as publish on the Trading Board prices of the
shares including offers, deals and volumes."
4.2.2 The domain name in issue was registered by the Respondent on March 5, 2001.
As at March 29, 2001, [when the Complainant sent its first cease
and desist letter], the domain name did not resolve to an active website.
The website referred to in paragraph 4.2.1 was not established until after the
Respondent was put on notice of the Complainant's rights in the STOXX trademark.
4.2.3 In the absence of a Response nothing further is known of the Respondent.
5. The Parties Contentions
5.1 The Complainant's Case
5.1.1 Identical or confusingly similar
The Complainant asserts that its STOXX trademark has famous trademark status.
The domain name in issue has as its distinguishing feature the Complainant's
STOXX trademark and the prefix GOLF is no more than descriptive of the services
which the Respondent offers. Accordingly, the distinctive element of the domain
name in issue, STOXX, is identical to the Complainant's trademark. It is obvious,
says the Complainant, that the domain name in issue is confusingly similar to
its STOXX trademark.
5.1.2 Rights or Legitimate Interests
The Complainants case is as follows:
- The Complainant's STOXX registered trademarks date from June 1998, [see,
paragraph 4.1.2] and those marks are registered in Spain, the Respondent's home
country. By the time the Respondent registered the domain name in issue [March 2001]
it would, therefore, be on constructive - if not, actual - notice of the Complainant's
STOXX registrations. It follows that the Respondent cannot claim to have made
any use of the domain name in issue in connection with a bona fide offering
of services before being put on notice of this dispute on March 29, 2001
[see, paragraph 4.2.2 above].
- Further, the Complainant has not consented to or licensed the Respondent
to use the STOXX trademark for the domain name in issue.
- Finally, the domain name in issue is being used for commercial purposes [see,
paragraph 4.2.1 above]. In the light of the foregoing, such use is not fair
use. The Respondent's intention is to mislead consumers into believing that
its business is in some way connected to that of the Complainant.
- In other words, the Respondent cannot bring itself within any of the circumstances
of paragraph 4c of the Policy which could have demonstrated rights or legitimate
interests to the golfstoxx.com domain name in issue.
5.1.3 Registered and Used in Bad Faith
The Complainant's case is as follows:
- The Complainant's trademark, which uses the two letters XX, is highly distinctive.
The Complainant's STOXX trademarks were all filed and registered before the
Respondent registered the domain name in issue in March 2001. The Complainant
has numerous licensees (totaling more than 40) in the Respondent's home country,
Spain. In the circumstances, it is clear that the domain name in issue was registered
in bad faith.
- At the date of the Complainant's first cease and desist letter of
March 29, 2001, the domain name in issue did not resolve to an active
website. The Respondent's website [see, paragraph 4.2.1 above] was not created
until after the Respondent was put on notice of the Complainant's rights in
the STOXX trademark. In fact, it appears that the website was not active until
February 2002. Although the Respondent replied by email dated April 18, 2001,
to the cease and desist letter of March 29, 2001, to the effect
that that letter had been forwarded to their lawyers, who would respond directly,
no reply was ever received. The Complainant sent an email reminder on May 9, 2001,
and on August 29, 2001, the Complainant's Spanish lawyers wrote a
second cease and desist letter to the Respondent. No reply to either
communication was received from the Respondent. The foregoing circumstances
demonstrate that the domain name was registered and has been used in bad faith.
- Finally, the Complaint asserts that it is obvious in the light of the foregoing
that the Respondent is intentionally making bad faith use of the STOXX
trademark through its domain name in issue to attract Internet users to its
website by creating the false impression that it is either licensed by or in
some way connected to the Complainant.
5.2 The Respondent's Case
No Response has been received from the Respondent.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each
of the following:
(i) that the Respondent's domain name is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular,
but without limitation, if found by the Panel to be proved based on its evaluation
of all the evidence presented, shall demonstrate the Respondent's rights or
legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by
the Panel to be present, shall be evidence of the registration and use of a
domain name in bad faith.
6.4 Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in the STOXX mark
which, by virtue of the double XX is a somewhat distinctive mark. There is,
in the Panel's opinion, insufficient evidence in the Complaint to demonstrate
that the STOXX mark is a famous trademark as defined by Article 6 bis of the
Paris Convention. It is, however, sufficient for the purposes of paragraph 4a(i)
of the Policy that the Complainant has rights in the STOXX trademark.
By virtue of use of the distinctive STOXX component, the Panel considers that
the Respondent's <golfstoxx.com> domain name in issue is confusingly similar
to the Complainant's STOXX trademark. The Complaint, therefore, meets the requirements
of the first limb of paragraph 4(a) of the Policy.
6.5 Rights or Legitimate Interest
In the absence of a Response, the Panel finds that the Complaint also satisfies
the second limb of paragraph 4(a) of the Policy. Indeed, on the facts presented
in the Complaint, there is nothing to indicate that the Respondent could demonstrate
any of the circumstances set out in paragraph 4(c) of the Policy.
6.6. Registered and Used in Bad Faith
Similarly, in the absence of a Response there is nothing to indicate registration
or use in good faith. The Panel finds that the Complainant's STOXX trademark
is distinctive and that this trademark was known and used both internationally
and in Spain [the country of the Respondent's establishment] before the domain
name in issue was registered in March 2001. This indicates registration
in bad faith. The fact that the Respondent's website using the domain name in
issue was only created after the Respondent was clearly put on notice of the
Complainant's rights in the STOXX trademark is a strong indication of use of
that domain name in bad faith. In the circumstances, the Panel finds that the
Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons the Panel decides that the Complainant has proved
each of the three elements of paragraph 4(a) of the Policy. Accordingly, the
Panel requires that the registration of the domain name <golfstoxx,.com>
be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: May 16, 2002
1. The territories covered by the 4 International
Registrations comprises Albania: Algeria: Germany: Armenia: Austria: Azerbaijan:
Belarus: Benelux: Bosnia-Herzegovina: Bulgaria: China: Croatia: Cuba: Egypt:
Spain: Macedonia: Russian Federation: France: Hungary: Italy: Kazakhstan: Kyrgyzstan:
Latvia: Liberia: Liechtenstein: Morocco: Monaco: Mongolia: Ozbekistan: Poland:
Portugal: Moldova: South Korea: Czech Republic: Romania: Sierra Leone: Slovakia:
Slovenia: Sudan: Tajikistan: Ukraine: Vietnam: Yugoslavia: Denmark: Finland:
Iceland: Norway: Sweden: United Kingdom
Stay updated! Get new cases and decisions by daily email.
