ITG Software Solutions, Inc. v. xiao gu
Claim Number: FA1306001503334
Complainant is ITG Software Solutions, Inc. (“Complainant”), represented by Leo M. Loughlin of Rothwell, Figg, Ernst & Manbeck P.C., District of Columbia, USA. Respondent is xiao gu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itgmarkets.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2013; the National Arbitration Forum received payment on June 5, 2013.
On June 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <itgmarkets.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@itgmarkets.com. Also on June 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, ITG Software Solutions, Inc., owns the ITG marks which are used in connection with financial goods and/or services.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ITG mark (e.g., Reg. No. 2,581,518, registered June 18, 2002).
3. The domain name <itgmarkets.com> begins with a literal reproduction of Complainant’s ITF mark. The mere addition of the generic word “market” does not alter the identity of Complainant’s ITG mark within the domain name or dispel the confusing similarity with Complainant’s ITG mark.
4. Respondent has no rights or legitimate interests with respect to the <itgmarkets.com> domain name.
i. Respondent has not been commonly known by <itgmarkets.com>.
ii. The <itgmarkets.com> domain name hosts a fraudulent website which purports to be associated with Complainant and Complainant’s sister company, ITG Derivatives. Respondent refers to itself throughout the fraudulent site as ITG and ITG DERIVATIVES.
5. Respondent has registered and is using the <itgmarkets.com> domain name in bad faith.
i. Respondent registered the <itgmarkets.com> domain name primarily for the purpose of disrupting Complainant’s business.
ii. Respondent’s fraudulent uses of Complainant’s trademarks illustrate a clear intent to attract Internet users by creating a likelihood of confusion as to affiliation with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent registered the <itgmarkets.com> domain name on April 12, 2013.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it owns the ITG marks which are used in connection with financial goods and/or services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the ITG mark (e.g., Reg. No. 2,581,518, registered June 18, 2002). The Panel notes that Respondent appears to reside in China. However, Complainant need not register its mark in the country in which Respondent resides under Policy ¶ 4(a)(i), so long as it demonstrates rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant adequately demonstrates rights in the ITG mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that the domain name <itgmarkets.com> begins with a literal reproduction of Complainant’s ITG mark. Complainant alleges that the mere addition of the generic word “market” does not alter the identity of Complainant’s ITG mark within the domain name or dispel the confusing similarity with Complainant’s ITG mark. The Panel agrees, and finds that Respondent’s addition of this generic or descriptive term to Complainant’s ITG mark to its domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Consequently, the Panel finds that Respondent’s <itgmarkets.com> domain name is confusingly similar to Complainant’s ITG mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent has not been commonly known by <itgmarkets.com>. Complainant claims that it actively monitors uses of its trademarks and other marks to find those that are confusingly similar. Complainant asserts that it is unaware of any use of <itgmarkets.com> by Respondent other than as the domain name. The Panel accepts these allegations and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant alleges that the <itgmarkets.com> domain name hosts a fraudulent website which purports to be associated with Complainant and Complainant’s sister company, ITG Derivatives. Complainant demonstrates that on Respondent’s site, a counterfeit representation of ITG’s registered logo is at the top of the page. Complainant contends that Respondent refers to itself throughout the fraudulent site as ITG and ITG DERIVATIVES. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. Accordingly, the Panel finds that Respondent’s attempt to pass itself off as Complainant through use of its disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <itgmarkets.com> domain name primarily for the purpose of disrupting Complainant’s business. Complainant asserts that Respondent’s website uses Complainant’s trademarks to promote purported services that would directly compete with Complainant’s products and services. The Panel agrees, and finds that Respondent is disrupting Complainant’s business, showing bad faith and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant claims that Respondent’s fraudulent uses of Complainant’s trademarks illustrate a clear intent to attract Internet users by creating a likelihood of confusion as to affiliation with Complainant. Complainant asserts that the <itgmarkets.com> domain name hosts a website purporting to be associated with Complainant. Complainant further demonstrates that Respondent uses ITG’s logo at the top of the page and that Respondent refers to itself throughout the fraudulent site as ITG and ITG DERIVATIVES. The Panel finds that Respondent’s attempt to pass itself off as Complainant, for which Respondent presumably gains commercially, attracts Internet users away from Complainant’s website, and constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itgmarkets.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 15, 2013
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