MarkitServ Limited v nicole guillermic
WIPO Case No. D2025-1202
•30-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
MarkitServ Limited v. nicole guillermic
Case No. D2025-1202
1. The Parties
Complainant is MarkitServ Limited, United Kingdom, represented by Ashurst LLP, United Kingdom.
Respondent is nicole guillermic, France.
2. The Domain Name and Registrar
The disputed domain name <osttra-invest.com> (the “Domain Name”) is registered with NameCheap, Inc.
(the “Registrar”).
3. Procedural History
| On March 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in | The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2025. registrant information. |
| The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2025. In accordance with the Rules, paragraph 5, the due date for the Response was April 20, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 25, 2025 |
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The Center appointed John C. McElwaine as the sole panelist in this matter on May 2, 2025. 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.
4. Factual Background
Complainant is a provider of post-trade processing solutions for the global financial services industry. relevant to this matter:
- OSTTRA, International Registration No. 1641773, designating the European Union, the United States of America, Japan, Singapore, and Israel, registered on June 17, 2021, in Classes 9, 35, 36, 38 and 42; and
- OSTRRA, United Kingdom Registration No. UK00003656080, registered on January 7, 2022, in Classes 9,
35, 36, 38 and 42.
Collectively these registered trademark rights are referred to as the “OSTTRA Mark”. The Domain Name was registered on December 16, 2024. The Domain Name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.
By way of background, Complainant explains that it is a joint venture owned by CME Group and S&P Global which was launched in September 2021. Complainant asserts that it is a leader of post-trade solutions provider offering a broad range of end-to-end financial investment services by leveraging software to bring together the expertise, processes and networks required to support and solve post-trade investment challenges of the global financial markets and to materially reduce risk, including in relation to global over- the-counter (OTC) markets across interest rate, foreign exchange (FX), equity and credit asset classes. Complainant claims to offer these services through approximately 1,350 post-trade professionals across eight global offices. Complainant alleges that as a result of the strong brand recognition of the OSTTRA Mark and the provision of market-leading investment related services, the OSTTRA Mark has enjoyed substantial press coverage and market recognition via online financial publications.
With respect to the first element of the Policy, Complainant asserts ownership of multiple trademark registrations for the OSTTRA Mark. The Domain Name incorporates Complainant's OSTTRA Mark in its entirety with the addition of a hyphen and the term “invest”, which is descriptive of Complainant's financial services business.
With respect to the second element of the Policy, Complainant alleges that Respondent has no rights or
legitimate interests in the Domain Name. Complainant asserts that it has not licensed or authorized
Respondent to use its marks. Complainant points out that it can find no “Osttra-Invest” business and that the
Domain Name is not being used for any active website.
With respect to the third element of the Policy, Complainant asserts bad faith registration and use because the OSTTRA Mark is well-known, having been used extensively in the United Kingdom and internationally, and Complainant has developed a class-leading financial solutions service represented by the OSTTRA
Mark. Complainant asserts that the evidence shows Respondent registered the Domain Name in December
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2024, well after Complainant's trademark rights were established. The Domain Name has never resolved to
an active website. Additionally, Respondent employed a privacy service to hide its identity and failed to
respond to the Complaint.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(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.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.
within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co.
Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe
Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2. On this point, Complainant has provided evidence that it is the owner of several registrations for the OSTTRA Mark.
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP
The Domain Name incorporates Complainant’s OSTTRA Mark in its entirety, with the addition of the term “- invest”. As stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
Therefore, the Panel concludes that the Domain Name is confusingly similar to Complainant’s mark, and
Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the evidence demonstrating rights or legitimate interests. See section 2.1 of the WIPO Overview 3.0.
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Here, Complainant has stated that it has not licensed or otherwise authorized Respondent to use its OSTTRA Mark or to register domain names incorporating the mark. There is no evidence that Respondent has been commonly known by the Domain Name or that Respondent has acquired any trademark rights in the term “Osttra-Invest”.
Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy[1] or otherwise.
Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted
The Panel finds that Respondent’s holding of the Domain Name, which has also been suspended due to
violations of ICANN policy, does not constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under the Policy. In this case, while the page is currently inactive, the potential for
future use for fraud or infringement on Complainant’s trademark rights is clear and present. Respondent
could have come forward with an explanation for its registration of the Domain Name, but did not.
Complaint’s OSTTRA Mark is unique, and the addition of the word “-invest” implies an association with
Complainant or its services. The silence of a respondent may support a finding that it has no rights or
legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v.
Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case
No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed
themselves of their rights to respond to the complaint, it can be assumed in appropriate circumstances that
respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James
Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case
No. D2003-0269.
Lastly, the Panel finds that Respondent is not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c), as the Domain Name resolves to an inactive webpage. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242. Here, with no explanation from Respondent concerning its intent, its passive holding of the Domain Name incorporating the OSTTRA Mark does not amount to a bona fide use.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interests, and Respondent has failed to come forward with evidence to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s lack of a formal response as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest.
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See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent knew or should have known of Complainant’s OSTTRA Mark when Respondent registered the Domain Name. WIPO Overview 3.0, section 3.2.2. Furthermore, and as
also detailed above, Respondent is not commonly known by the Domain Name and does not have any undisputed, and the Panel can infer bad faith, particularly in light of the other elements of bad faith discussed below.
legitimate interests in the Domain Name. Accordingly, on the record, there is no explanation to justify
Furthermore, the fact that the Domain Name does not resolve to a website and is being passively held does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. Section 3.3 of the WIPO Overview 3.0 instructs that panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good- faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id.
Complainant submitted evidence that the OSTTRA Mark was well-known by virtue of multiple online articles
and winning industry awards. While the OSTTRA Mark may not be famous or well-known, it is not
indistinctive (and is, in fact, inherently distinctive), and its reputation was well-known enough by Respondent
to associate the word “invest” with the OSTTRA Mark. Respondent has not offered any evidence to rebut
these assertions. Furthermore, by virtue of its failure to formally respond to the Complaint, Respondent
provided no evidence of its intended use of the Domain Name. In fact, Respondent is not using the Domain
Name in any manner to demonstrate a bona fide use or potential use. In addition, Complainant contends
that the Domain Name was suspended for inaccurate registration data and Respondent’s name has no
apparent connection with the Domain Name. Lastly, with no response to explain its choice of word “invest” in
the Domain Name, it is apparent that Respondent sought to imply a connection or an affiliation with
Complainant, which was not accurate. In light of these factors, the Panel finds that Respondent’s passive
holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain
Name was registered and is being used in bad faith by Respondent.
For the reasons set forth above, the Panel finds that Complainant has met its burden of showing that
Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 Domain Name, <osttra-invest.com>, be transferred to Complainant.
/John C McElwaine/
John C McElwaine
Sole Panelist
Date: May 16, 2025
legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
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