Euronext N.V. v Ise Ise

WIPO Case No. D2024-0328

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Euronext N.V. v. Ise Ise

Case No. D2024-0328

1. The Parties

The Complainant is Euronext N.V., Netherlands (Kingdom of the), represented by LegalMatters.com B.V.,

Netherlands (Kingdom of the).

The Respondent is Ise Ise, Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names, <euronextf r.net>, <euronextnl.cc>, <euronextstock.co>, and

<euronextus.com> (the “Disputed Domain Names”), are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2024. On January 25, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Disputed Domain Names. On January 25, 2024, 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 (PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 26, 2024, 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 amendment to the Complaint on January 29, 2024.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on February 22, 2024.

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The Center appointed Ganna Prokhorova as the sole panelist in this matter on February 26, 2024. The Panel f inds 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 Euronext N.V., a Dutch company operating in the f inancial f ield, and owning several trademark registrations worldwide for EURONEXT, among which are:

- the European Union, registration No. 013343629, word mark EURONEXT for the classes 9, 35, 36, 38,
41 and 42, registered on March 3, 2015;

- the United Kingdom, registration No. UK00913343629, word mark EURONEXT for the classes 9, 35,
36, 38, 41 and 42, registered on March 3, 2015; and

- the International, registration No. 1506088, designating the United Kingdom, Norway, Russian
Federation, Singapore and the United States of America, word mark EURONEXT for the classes 9, 35,
38, 38, 41 and 42, registered on May 22, 2019.

The Complainant further owns the domain name <euronext.com>, registered on April 25, 1998, that resolves to its corporate website, where the Complainant promotes and of fers its products and services.

The Disputed Domain Names are: <euronextus.com>, registered January 11, 2024, <euronextf r.net>,
registered January 11, 2024, <euronextnl.cc>, registered December 28, 2023, <euronextstock.co>,
registered December 28, 2023, that resolve to the websites with equal or very similar contents depicting the
Complainant’s mark EURONEXT and device trademark (logo), as set out in relevant annexes to the

Complaint.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names.

Notably, the Complainant contends that:

(1) The Disputed Domain Names are identical, or at least visually and phonetically highly similar to the Complainant’s earlier trademark EURONEXT, which will lead to confusion amongst the Internet users. The element “us” in <euronextus.com> is merely the abbreviation of the United States. The element “f r” in <euronextfr.net> is merely the abbreviation of France. The element “nl” in <euronextnl.cc> is merely the abbreviation of the Netherlands. The element “stock” in <euronextstock.co> is descriptive as it refers to a stock exchange, the core-business of the Complainant as well as the services pretended to be offered on the disputed domain name. The .com, .net, .cc and .co elements are just the Top-Level Domain extensions. All mentioned elements are descriptive and non-distinctive and therefore should not be taken into consideration when comparing the Disputed Domain Names with the Complainant’s earlier trademark. Even if these elements are considered to have some distinctive character the overall impression between the Disputed Domain Names and the earlier trademark EURONEXT of the Complainant is nearly identical or at least highly similar.

(2) The Respondent has no rights or legitimate interests in the Disputed Domain Names because the
Respondent is not commonly known by the Disputed Domain Names and has not been authorized to use the

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Complainant’s EURONEXT trademark. The Respondent is not using the Disputed Domain Names with a bona f ide intent and is not making a legitimate noncommercial or fair use of the Disputed Domain Names.

(3) The Respondent has registered and used the Disputed Domain Names in bad faith. At the time of active under the Disputed Domain Names, by which the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. It also shows that the Respondent is not using the Disputed Domain Names with a bona f ide intent and/or not making a legitimate noncommercial or fair use of the Disputed Domain Names.

registering the Disputed Domain Names, the Respondent could and should have been aware of the
Complainant who is the Europe’s largest bourse/stock exchange, well-known in the f inancial market. The

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisf ied, as following:

(i)     the disputed 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 disputed domain name; and

(iii)    the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

Moreover, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP consensus views captured therein.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the evidence in the case file, the Panel finds that, the Complainant has shown rights in respect of
EURONEXT trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel also finds that the entirety of the mark is reproduced within the Disputed Domain Names. The addition of other terms, such as “us”, “fr”, “nl” and “stock” do not prevent a f inding of confusing similarity between the Disputed Domain Names and the Complainant’s EURONEXT mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Accordingly, the Disputed Domain Names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the country code and generic Top-Level Domains (“TLDs”) .com, .net, .cc and .co do not prevent a f inding of confusing similarity, as the addition of the TLDs is a technical requirement of registration. WIPO Overview 3.0, section 1.11.1.

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Based on the available record, the Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names such as those enumerated in the Policy or otherwise.

The Respondent has not demonstrated rights or legitimate interests in the Disputed Domain Names by showing, before any notice to the Respondent of the dispute, that the Respondent has made use or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services nor has the Respondent been commonly known by the Disputed Domain Names nor has the Respondent made a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.

Furthermore, the Panel notes that the composition of the Disputed Domain Names carry a risk of implied af f iliation. WIPO Overview 3.0, section 2.5.1.

Therefore, the Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel takes due note that the Disputed Domain Names resolve to websites allegedly promoting similar services to those of the Complainant and reproducing without any authorization the Complainant’s trademark and the logo. For the Panel, it is therefore evident that the Respondent knew the Complainant’s company, well-known trademark and reputation at the time of the registration of the Disputed Domain Names, particularly noting the Respondent’s use of the Complainant’s trademarks on the website of the Disputed Domain Names and that the Disputed Domain Names were hence registered in bad faith. See also Euronext N.V. v. Ise Ise, WIPO Case No. DCO2023-0089 against the same Respondent.

With regard to the use of the Disputed Domain Names, the Panel notes that the Disputed Domain Names resolve to websites that feature the Complainant’s trademarks. This is within the meaning of paragraph 4(b)(iv) of the Policy, which states that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood

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of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of

the Respondent’s websites or of a product or service on the Respondent’s website.

Based on the available record, the Panel f inds that the third element of the Policy has been established.

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, <euronextf r.net>, <euronextnl.cc>, <euronextstock.co>, and <euronextus.com>, be transferred to the Complainant.

/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: March 7, 2024