The Complainant is London Stock Exchange Plc, United Kingdom, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is SyedJ Hussain, IBN7 Media Group, United States of America (“United States”).
The disputed domain name <lserefinitiv.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2019, 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 August 28, 2019.
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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on October 8, 2019. 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, London Stock Exchange plc (“LSE”), is a public limited company incorporated in the United Kingdom on November 19, 1986. LSE is one of the world’s oldest stock exchanges and can trace its history back over 300 years to 1571. LSE is part of the London Stock Exchange Group (“LSEG”) which operates a broad range of international equity, bond and derivatives markets, including London Stock Exchange, Borsa Italiana, MTS, and Turquoise. The Complainant is one of the world’s most international capital markets, home to approximately 2,200 companies from more than 70 countries around the world. According to the officially published and independently audited results for the first half of the financial year 2019, LSEG had total revenues of GBP 1,018 million, up 7 percent from 2018. Its total income was up 8 percent to GBP 1,140 million in the six months ending June 30, 2019.
The Complainant’s brands, LSE, LSEG and LONDON STOCK EXCHANGE (the “LSE Brand”) are registered in many countries around the world. The LSE Brand is currently valued at GBP 287 million and ranked as the ninth most valuable exchange brand in the world. The Complainant owns the LSE trade mark which is registered in the European Union in a variety of classes since February 28, 2016 (the “Trade Mark”). LSEG owns and operates these two domain names <londonstockexchange.com> and <lseg.com>.
On July 26, 2019, the Financial Times and various other news outlets reported that LSEG is in talks to acquire a company called Refinitiv in a deal that is set to be valued at approximately USD 27 billion. LSEG issued an official statement confirming its possible acquisition of Refinitiv on July 27, 2019.
Serving more than 40,000 institutions in over 190 countries, Refinitiv provides information, insights and technology that drive innovation and performance in global financial markets. It uses the domain name <refinitiv.com> and its corporate website is at “www.refinitiv.com”.
On July 27, 2019, the Respondent registered the Domain Name and the domain name <refinitivlse.com> which is the subject of a separate domain name complaint (London Stock Exchange Plc v. SyedJ Hussain, IBN7 Media Group, WIPO Case No. D2019-1948). The Domain Name is connected to “www.above.com/marketplace/lserefinitiv.com” where it appears to be offered for sale. The page invites Internet users to make an offer to buy it from the Respondent. The Respondent has been the subject of many previous UDRP complaints and has had many adverse decisions against him.
This Complaint is made with the full support and approval of Refinitiv and a letter from Refinitiv confirming this was submitted in evidence.
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks 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 was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name consists of the Trade Mark in its entirety combined with name “Refinitiv” as a suffix which is a brand which belongs to a third party, Refinitiv.
UDRP panels have consistently found that the respondent’s inclusion of a third party’s trade mark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the complainant’s trade mark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; and F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not in any way connected or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to make any use of the Trade Mark. The Respondent cannot assert that it was using or had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The registration of the Domain Name which is made up of a combination of the Complainant’s trade mark and mark of the third party that the Complainant may acquire a day after such news becomes public for the purpose of sale cannot be considered a bona fide offering of goods or services. This has the hallmarks of a typical cyber-squatting case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Name comprising a trade mark with which it has no connection. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since the Domain Name which consists of the combination of the Trade Mark and the name of a third party was registered the day after an announcement that the Complainant may acquire the third party.
In light of the above, the Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The panel in BlackRock Index Services v. Syed Hussain, IBN7 Media Group, WIPO Case No. D2017-1523 concluded that the respondent had registered and used in bad faith the disputed domain name. He also observed that “This conclusion is reinforced by the fact that Respondent has repeatedly been instructed by other UDRP panels that his modus operandi demonstrates bad faith registration and usage. See Telstra Corporation Limited v. MIC and Syed Hussain, WIPO Case No. D2002-0126”.
The consensus view in the WIPO Overview 3.0 relating to what constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name is as follow:
“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.
This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.”
The offer for sale of the Domain Name fits with the modus operandi of the Respondent. The Panel notes that there are more than 20 decisions against Syed Hussain with the same address as the Respondent and concludes that the registration of the Domain Name is sufficient to constitute a pattern of conduct preventing the Complainant from reflecting the mark in a corresponding domain name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraphs 4(b)(i) and 4(b)(ii) of the Policy.
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 <lserefinitiv.com> be transferred to the Complainant.
Date: November 4, 2019
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