BGC Partners, L.P. and BGC Securities (Hong Kong) LLC and BGC Capital Markets (Hong Kong) Limited v. 香 港 Ms. Mila Wu
Claim Number: FA1503001609742
Complainant is BGC Partners, L.P. and BGC Securities (Hong Kong) LLC and BGC Capital Markets (Hong Kong) Limited (“Complainant”), represented by Michael D. Brinton of BGC Partners, L.P., District of Columbia, USA. Respondent is 香 港 Ms. Mila Wu (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bgc.网址> and <bgcpartners.网址>, registered with Zdns.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2015; the Forum received payment on March 17, 2015. The Complaint was submitted in both English and Chinese.
On March 26, 2015, Zdns confirmed by e-mail to the Forum that the <bgc.网址> and <bgcpartners.网址> domain names are registered with Zdns and that Respondent is the current registrant of the names. Zdns has verified that Respondent is bound by the Zdns 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 April 6, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 27, 2015 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@bgc.网址, postmaster@bgcpartners.网址. Also on April 6, 2015, the Chinese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
Language of the Proceedings
The applicable Registration Agreement is written in Chinese, thereby making Chinese the official language of this proceeding. However, pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied by virtue of the Chinese language Complaint and Commencement Notification. Therefore, and in the absence of a Response, the remainder of this proceeding will be conducted in English.
A. Complainant
Complainant uses the BGC mark to market its financial products and services, including futures, equities, derivatives and brokerage services.
Complainant holds a registration for the BGC service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 3,184,410, registered December 12, 2006).
Respondent registered the <bgc.网址> and <bgcpartners.网址> domain names on January 5, 2015.
The domain names are confusingly similar to the BGC mark, the “.网址” generic top-level domain (“gTLD”) translating to “URL.”
Respondent has not been commonly known by the domain names.
Complainant has not given Respondent consent to register domain names containing its BGC mark.
The websites resolving from the domain names do not make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead they resolve to an inactive page displaying the error message, “Server Not Found.”
Respondent has no rights to or legitimate interests in the domain names.
Respondent knew of Complainant and its rights the BGC mark when it registered the domain names.
Respondent has registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the BGC service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
This is true without regard to whether Complainant’s rights in its mark arise from registration of that mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here People’s Republic of China). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence). See also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), concluding that:
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <bgc.网址> and <bgcpartners.网址> domain names are confusingly similar to the BGC mark. The domain names incorporate the entire BGC mark and add the generic Top Level Domain (“gTLD”) “.网址,” which translates to “URL.” This alteration of the mark, made in forming the domain names, does not save them from the realm of confusing similarity under the standards of the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The <bgcpartners.网址> domain name also adds the generic term “partners” to Complainant’s BGC mark. This is likewise inadequate to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding the domain name <suttonpromo.com> confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to an analysis under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed <bgc.网址> or <bgcpartners.网址> domain names, and that Complainant has not given Respondent authorization to register domain names containing its BGC mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “香 港 Ms. Mila Wu,” which does not resemble the domain names. On this record, we conclude that Respondent has failed to show that it has been commonly known by either of the domain names so as to have acquired rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence that it was commonly known by that domain name).
We next observe that Complainant contends, without objection from Respondent, that the websites associated with the domain names resolve to an inactive web page displaying the error message, “Server Not Found.” This inactive use of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
From a review of the evidence we conclude that Respondent’s failure to make an active use of the either of the domain names <bgc.网址> and <bgcpartners.网址> demonstrates Respondent’s bad faith in their registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a UDRP respondent’s failure to make an active use of a contested domain name satisfies the bad faith proof requirement of ¶ 4(a)(iii) of the Policy).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the BGC service mark when it registered the <bgc.网址> and <bgcpartners.网址> domain names. This too illustrates Respondent’s bad faith in registering the domain names. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when it registered the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bgc.网址> and <bgcpartners.网址> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 8, 2015
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