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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NYSE Group, Inc., Euronext N.V., LIFFE Administration and Management v. Steven Stanwyck, Eduardo Garcia Gil

Case No. D2008-0104

 

1. The Parties

The Complainants are NYSE Group, Inc., Euronext N.V. and LIFFE Administration and Management, New York, New York, United States of America, represented by Baker Botts, LLP, United States of America.

The Respondents are Steven Stanwyck, Santa Monica, California, United States of America and Eduardo Garcia Gil, Madrid, Spain.

 

2. The Domain Names and Registrars

The disputed domain names <eliffe.com>, <enyseeuronext.com>, <liffenyse.com>, <liffespdr.com>, <nyseliffe.com> and <nysespdr.com> are registered with Melbourne IT Trading as Internet Names Worldwide.

The disputed domain name <nyseeuro.com> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2008. On January 25, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide and to eNom, Inc. a request for registrar verification in connection with the domain names at issue. On January 29, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent Steven Stanwyck is listed as the registrant of <eliffe.com>, <enyseeuronext.com>, <liffenyse.com>, <liffespdr.com>, <nyseliffe.com> and <nysespdr.com> and providing the contact details. On January 30, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent Eduardo Garcia Gil is listed as the registrant of <nyseeuro.com> and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on February 7, 2008. 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”), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 29, 2008.

The Center appointed John Swinson as the sole panelist in this matter on March 6, 2008. 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.

On March 10, 2008, after the first draft of this decision had been prepared by the Panel, the Complainants’ attorney wrote to the Center asking that this proceeding be stayed. In further correspondence, the Complainants’ attorney wrote as follows:

“On October 12, 2007, Respondent Steven Stanwyck filed a petition under chapter 11 of the United States Bankruptcy Code (11 U.S.C. §§ 101 et seq.) in the United States Bankruptcy Court for the Central District of California (Case No. 2:07-bk-19183-SB). Upon the filing of Mr. Stanwyck’s bankruptcy case, a stay of certain actions and proceedings went into effect pursuant to 11 U.S.C. § 362(a). This stay extends to judicial and administrative proceedings against Mr. Stanwyck. The stay automatically and immediately took effect upon Mr. Stanwyck’s bankruptcy filing.

Complainants, who had no knowledge of Mr. Stanwyck’s bankruptcy filing at the time they filed their complaint with WIPO, believe that the automatic stay from Mr. Stanwyck’s bankruptcy case is applicable to this proceeding as it relates to Mr. Stanwyck. Complainants, however, are in the process of seeking an order from the bankruptcy court that will lift the automatic stay and allow this proceeding to continue. Accordingly, Complainants request that the panel take no further action in this proceeding until Complainants are able to obtain an order from the bankruptcy court lifting the automatic stay.”

 

4. Factual Background

The Complainants comprise three related companies who are involved in the trading of securities in national and international markets and ancillary stock exchange services.

Euronext N.V. (“Euronext”) is a European based stock exchange first formed in September 2000, with its main headquarters in Paris. LIFFE Adminstration and Management, a United Kingdom corporation (“LIFFE”), operates the London International Financial Futures and Options Exchange. In 2001, Euronext acquired the shares in LIFFE, and now LIFFE is better known as Euronext.liffe.

NYSE Group Inc. (“NYSE Group”) is the successor to the New York Stock Exchange Inc. which was founded in 1792. In April 2007, NYSE Group merged with Euronext to create NYSE Euronext N.V., said to be the first global stock exchange. This merger received significant press media coverage when it was first announced in June 2006.

NYSE Group owns a large number of United States trademarks which incorporate “NYSE”. See, for example, registration numbers 2674864, 2665267, 2710448 and 909350. Registration 909350 has a date of first use as January 1863. Euronext owns several United States trademark registrations which incorporate “EURONEXT”. See, for example, registration numbers 2689802, 2616837 and 2875951. LIFFE owns several United States trademark registrations which incorporate “LIFFE”. See, for example, registration numbers 2754771, 2498532 and 2516119.

The websites for the <eliffe.com>, <enyseeuronext.com>, <liffenyse.com>, <liffespdr.com>, <nyseliffe.com> and <nysespdr.com> domain names are stated to be under construction. Yahoo has a placeholder at these websites, which contain links to a wide range of websites, none of which are related to stock markets or similar goods or services. The website for the <nyseeuro.com> domain name automatically redirects to a Sedo parking page, which again contains links to websites unrelated to stock markets and ancillary goods/services.

The Respondents are two individuals. One individual (Mr. Stanwyck) is the registrant of six domain names, while the other (Mr. Gil) is the registrant of one. From an email communication to the Center dated February 13, 2008, Mr. Gil indicated that he was not interested in the Complaint or the <nyseeuro.com> domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

Together, the Complainants have trademark rights in and to the marks NYSE, EURONEXT, NYSE EURONEXT and LIFFE (as explained below). These marks are well known and famous in connection with stock exchange trading and ancillary services.

Since 1863, NYSE Group (and its predecessors) has continuously used the mark NYSE in relation to its operation of a securities exchange and related stock market services. NYSE Group has spent a significant amount of time, effort and money ensuring that consumers associate NYSE exclusively with NYSE Group. NYSE Group owns numerous United States trademark registrations which consist of or incorporate NYSE, and also owns registered NYSE trademarks in many other countries.

Since 2000, Euronext has continuously used the mark EURONEXT in relation to its operation of a securities exchange and related stock market services. Euronext N.V. has spent a significant amount of time, effort and money ensuring that consumers associate EURONEXT exclusively with Euronext. Euronext owns various trademark registrations across many countries which consist of or incorporate EURONEXT (including United States registrations).

Since 1982, LIFFE has continuously used the mark LIFFE in relation to its operation of a securities exchange and related stock market services. LIFFE has spent a significant amount of time, effort and money ensuring that consumers associate LIFFE exclusively with LIFFE. LIFFE owns various trademark registrations across many countries which consist of or incorporate LIFFE (including United States registrations).

The merger between NYSE Group and Euronext received widespread press coverage, and as such the name NYSE EURONEXT is now identified exclusively with NYSE Group and Euronext. NYSE Group and Euronext have jointly filed trademark applications throughout the world for NYSE EURONEXT, including United States serial number 77173999.

The Complainants have also registered a large number of domain names which contain the trademarks of NYSE, EURONEXT and LIFFE. The Complainants have exercised considerable care and skill in advertising and marketing the products and services sold under the NYSE, EURONEXT and LIFFE trademarks. These marks have acquired a significant amount of goodwill and are exclusively associated with their respective owners. There is also an extraordinary degree of consumer recognition of these marks.

In relation to the <eliffe.com> and <enyseeuronext.com> domain names, the Respondent (Mr. Stanwyck) has merely added the letter “e” (an Internet-related term) to the Complainants’ trademarks of LIFFE and NYSEEURONEXT.

In relation to the <liffespdr.com> and <nysespdr.com> domain names, the Respondent (Mr. Stanwyck) has added the term SPDR (a well known term in financial and securities industries) to the Complainants’ trademarks of LIFFE and NYSE. (SPDR is a trademark owned by a third party which offers financial products and services directly related to the Complainants’ products and services).

In relation to the <liffenyse.com> and <nyseliffe.com> domain names, the Respondent (Mr. Stanwyck) has combined the Complainants’ NYSE and LIFFE trademarks.

Finally, in relation to the <nyseeuro.com> domain name, the Respondent (Mr. Gil) has shortened the Complainants’ NYSE EURONEXT trademark (leaving out the term NEXT).

Internet users are likely to believe that the disputed domain names are related to or associated with the Complainants and their business. None of the Respondents’ actions (adding an “e” or “SPDR”, combining trademarks or shortening trademarks) is enough to preclude a finding of confusing similarity.

Neither Respondent:

- has used or shown demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services;

- has been commonly known by the disputed domain name(s);

- is making a legitimate noncommercial or fair use of the disputed domain.

The Respondents have not been licensed by, or received any permission or consent from, either Complainant, to use the trademarks in the disputed domain names. There can be no legitimate use when the trademarks incorporated in the disputed domain names are widely recognized and have been used for an extended period of time.

The Respondent (Mr. Stanwyck) registered the disputed domain names on June 3, 2006 or June 4, 2006, which is only a few days after the merger between NYSE Group and Euronext N.V. was publicly announced. The Respondent (Mr. Stanwyck) is using all of the disputed domain names other than <nyseeuro.com> to host websites which divert Internet users who are looking for the Complainants’ websites. The Respondent (Mr. Gil) appears to be related to and represented by the Respondent Mr. Stanwyck, and is not currently using the <nyseeuro.com> domain name.

The Respondents are receiving financial benefit from directing customers to these websites and they obviously registered the disputed domain names with this purpose in mind. The Respondents have acted in bad faith by attempting to attract for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainants’ trademarks.

Bad faith on the part of the Respondents can also be shown by the following:

- the Respondents had actual or constructive knowledge of the Complainants’ trademarks at the time of registering the disputed domain names (the Complainants had firmly established their rights in the trademarks well before the Respondents registered the disputed domain names).

- the Respondents have registered multiple domain names incorporating the Complainants’ trademarks, demonstrating a pattern of registering third party trademarks.

- the Respondents have targeted the Complainants. On April 27, 2007 the Board of Directors of NYSE Euronext received a letter from the Respondent Mr. Stanwyck, advising that he represented the owners of the disputed domain names. The letter asked that NYSE Euronext immediately cease using any similar domain or operational identifiers to the disputed domain names. After this initial correspondence, the Respondent Mr. Stanwyck sent harassing emails and facsimiles to the Complainants and legal representatives. The Complainants have made several attempts to contact Mr. Stanwyck but to no avail.

As a final alternative, the circumstances of the case warrant a finding of bad faith, because the Respondents have registered the disputed domain names without any legitimate right or interest in them, only to passively hold them.

B. Respondent

The Respondents did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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.

As a preliminary matter, the Panel is satisfied that there would appear to be a sufficient nexus between the two Respondents as to make it appropriate for them to be considered as co-Respondents for the purpose of these present Policy proceedings.

A. Identical or Confusingly Similar

Together the Complainants have registered a large number of trademarks in the United States and other countries throughout the world, which contain NYSE, EURONEXT and/or LIFFE. The Panel agrees with the Complainants that these trademarks are widely known throughout the world, as they have been extensively used for a significant period of time. The Panel therefore finds that NYSE Group has trademark rights in NYSE, that Euronext has trademark rights in EURONEXT and that LIFFE has trademark rights in LIFFE.

Two of the Complainants (NYSE Group and Euronext) have filed trademark applications in the United States and other jurisdictions over NYSE EURONEXT. In the Panel’s opinion, these trademark applications are not per se trademark rights in NYSE EURONEXT. However, the Panel finds that NYSE Group and Euronext have developed common law rights in the term NYSE EURONEXT, given the current use but also the extent of publicity surrounding the merger already in June 2006, when the merged entity was presented as NYSE EURONEXT.

As trademark rights have been established, the next question is whether the disputed domain names are identical or confusingly similar to the Complainants’ NYSE, EURONEXT, NYSE EURONEXT and LIFFE trademarks.

In relation to <eliffe.com> and <enyseeuronext.com>, the domain names consist of the Complainants’ LIFFE and NYSE EURONEXT trademarks. The only difference between these domain names and the trademarks is the addition of an “e” at the beginning. As noted in Scholastic Inc. v. Applied Software Solutions Inc., WIPO Case No. D2000-1629: “Prior Panel decisions have determined that the addition of minor elements such as an ‘e’ before a trademark, or ‘s’ following the trademark have not altered the determination that the domain name adopted is identical or confusingly similar to the trademark in which the complainant has rights.” Accordingly, the Panel determines that these two domain names are confusingly similar to the Complainants’ trademarks.

In relation to <liffespdr.com> and <nysespdr.com>, the domain names consist of the Complainants’ LIFFE and NYSE trademarks. The only difference between these domain names and the trademarks is the addition of “sprd” after the trademarks. SPDR (known as Spiders) is a term used widely in stock market and stock exchange circles. (Spiders are listed on the American Stock Exchange under the ticker symbol SPY, and one SPDR unit is valued at approximately one-tenth of the value of the Standard & Poor’s 500 Index). In light of this meaning, and the well known reputation of the Complainants’ trademarks in exactly the same marketplace, the addition of the suffix “spdr” does not affect the power of the words LIFFE or NYSE and the disputed domain names are consequently confusingly similar to the corresponding registered trademarks.

In relation to <liffenyse.com> and <nyseliffe.com>, the domain names contain a combination of the LIFFE and NYSE trademarks. As mentioned in the Complaint, these domain names were registered by the Respondents soon after the merger between NYSE Group and Euronext was announced. At that time, Euronext N.V. owned LIFFE, and had done for some number of years. Given the obvious connection between NYSE and LIFFE at the time the disputed domain names were registered, the Panel finds that the domain names are confusingly similar to the Complainants’ trademarks: Nintendo of America Inc. v. Pokemon, WIPO Case No. D2000-1230.

Finally, in relation to <nyseeuro.com>, the domain name contains only part of the NYSE EURONEXT trademark (by excluding the “next” component). Given the well known reputation of the term NYSE, and the extensive amount of publicity which involved the merger between NYSE and Euronext, the term NYSEEURO sounds like an obvious abbreviation of the words “NYSE EURONEXT” (Canadian Tire Corporation, Limited v. Juancho Feliciano, WIPO Case No. D2005-0375). Removing the “next” is not sufficient to distinguish the disputed domain name, particularly because the disputed domain name fully incorporates the well known but distinctive term “NYSE”. For this reason there is confusing similarity between this disputed domain name and the Complainant’s NYSE EURONEXT trademark.

Accordingly, the first element has been met in respect of all disputed domain names.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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.” (Policy, paragraph 4(c)).

To succeed on this element, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

In the Complaint, the Complainants contends that none of the circumstances in paragraph 4(c) have been met, and that the Complainants have not authorized or licensed the Respondents to use the trademarks. The Complainants also state that there can be no legitimate use by the Respondents because the trademarks in question are so widely recognized throughout the world, and are associated exclusively with the Complainants.

The Respondents do not appear to be known by either all or part of the terms which form the disputed domain names. Each Complainant, who is well known by their relevant trademark, has not licensed or permitted the Respondents to use those trademarks.

The disputed domain names were first registered in June 2006. The website at each disputed domain name is not operational at the date of this decision. The Respondents are therefore not making a legitimate use of the disputed domain names, and appears to have failed to do so in almost two years of registration. Nor have the Respondents provided evidence of any demonstrable preparations to legitimately use the disputed domain names in connection with a bona fide offering of goods and services.

In the Complaint, the Complainants note that websites were previously operating from all disputed domain names other than <nyseuro.com>, and those websites featured links to the Complainants’ websites as well as competitors’ websites. This statement is supported by documents annexed to the Complaint, which were printed on January 18, 2008. At the time the Panel reviewed the websites, there were no longer any direct links to the Complainants’ websites, or competitors’ websites. However, there were links to general areas related to the Complainants’ business such as “brokerage”, “trading”, and “stock market”, which indicates that an Internet user could ultimately end up at either the Complainants’ websites, or a competitors’ websites from the disputed domain names.

The Complainants have presented a prima facie case indicating that the Respondents do not have any rights or legitimate interests in the disputed domain names. The Respondents have not filed any response in this proceeding, and have therefore failed to rebut the Complainants’ prima facie case.

The second element has been met in respect of all disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances 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 Complaint, the Complainants refer to subparagraphs (ii) and (iv). Subparagraph (ii) provides for circumstances where the respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Subparagraph (iv) includes circumstances where the respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

There is no direct evidence that the Respondents knew of the Complainants’ trademarks at the time of registering the disputed domain names. Nor is there any direct evidence that they registered the disputed domain names for the reasons set out in either paragraph 4(b)(ii) or (iv). However, the Respondents’ knowledge and intention may be determined by common sense inferences from circumstantial evidence.

Securities are traded every day, all over the world, and stock exchanges regularly feature on television and in the press. Securities trading has an impact on financial markets everywhere, and can impact on individuals regardless of whether they engage in trading activities themselves. As such, the Panel infers that the trademarks used in the disputed domain names are well known by a vast majority of people worldwide (whether they trade on the stock market or not), because these marks receive significant coverage in the media, including in the United States.

The Panel infers that the Respondents knew every one of the trademarks at the time they registered the disputed domain names. Given the timing of registration, the Panel infers that the Respondents had heard of the impending merger between NYSE Group and Euronext, and registered the domain names to take advantage of the association between the three Complainants, and the significant media attention these marks would receive.

The Panel also infers bad faith from the fact that the Respondents registered six domain names at once (all of which contained one or more of the Complainants’ trademarks). See Sundor Brands v. Trenchcoat Productions, Inc, WIPO Case No. D2000-0633. The Respondents appear to have known of the connection between LIFFE, EURONEXT and NYSE and registered various combinations of those terms. The Panel infers that the Respondents registered these names to deprive the Complainants of the opportunity from reflecting the mark in a corresponding domain name, and that the Respondents have engaged in a pattern of such conduct 4(b)(ii).

The Panel also refers to the cases of Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127 and Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236, which involved the registration of domain names soon after a merger was announced.

The letter sent by the Respondent (Mr. Stanwyck) on April 27, 2007 states to one of the Complainants: “We represent the owners of the following domain names which will in the near future be used with regard to a trading set of international operations and concepts, based upon certain ‘commodities’ and their derivatives, surrogates, proxies and the like. The purpose of this communication, is to request that you immediately cease from using any similar domain or operational identifiers”. While the Complainants appear to have given the Respondents an opportunity to legitimatise their use of the disputed domain names, the Respondents did not respond. The fact that the Respondent (Mr. Stanwyck) sent a letter to the Complainants regarding the Complainants’ own trademarks, and threatening them to, in effect, not use their own trademarks, indicates that he was well aware of the likelihood of confusion between the disputed domain names and trademarks, and was seeking to make a financial gain from it.

In summary, the Panel finds that the Respondents knew of the Complainants’ trademarks, and chose to register and use the disputed domain names in order to confuse and divert Internet traffic to the Respondents’ website, based upon the following circumstances: (a) the Complainants’ registered trademarks are distinctive and specific to the Complainants in connection with its stock exchange services, and are widely known as a result of extensive and long term advertising and use; (b) there is no apparent connection or relationship between the disputed domain names and the Respondents or the websites for which the Respondents use the disputed domain name; (c) the Respondents do not use the domain names to sell their own goods and services, but merely allow a third party to provide links and advertisements; (d) there is no other apparent legitimate justification for the Respondents’ registration and use of the disputed domain names for their websites.

The Panel finds that the third element has been met in relation to all domain names.

D. Request for Stay

The Complainants have requested a stay due to United States Bankruptcy proceedings involving one of the Respondents.

The Panel notes the decision of Jerome A. Rich v. Jim Rich, WIPO Case No. D2007-1346, where the panelist in that case wrote:

“Under a provision of United States bankruptcy law, 11 U.S.C. §362, no person may commence legal proceedings against the debtor (Respondent) without the permission of the bankruptcy court presiding over the estate. Whether commencement of this proceeding under the Policy or implementation of the Panel’s order violates that provision is a matter for the bankruptcy court, not the Panel, to determine; the Panel expresses no opinion on these questions. To the extent that it has discretion under paragraph 18(a) of the Rules “to suspend or terminate the administrative proceeding, or to proceed to a decision,” the Panel elects to proceed to decision. Either party may raise any applicable Bankruptcy Act issues with the bankruptcy court or United States Trustee.”

The Panel in this case is satisfied that the approach adopted by the US panelist in Jerome A. Rich (supra) is apposite to the circumstances of the present case.

Accordingly, as these UDRP proceedings have been commenced, the Panel believes it is appropriate in the context of this expedited process to proceed to render this decision. It is for the parties and the U.S. bankruptcy court to decide whether this decision can be implemented, and it is clearly upon to a relevant court to make a contrary finding if it believes that it is appropriate.

E. Relief Sought

The Panel concludes that the following disputed domain names:

<eliffe.com>

<enyseeuronext.com>

<liffenyse.com>

<liffespdr.com>

<nyseliffe.com>

<nysespdr.com>

<nyseeuro.com>

are identical with and confusingly similar to the Complainants’ trademarks, that the Respondents have no rights or legitimate interests in these names, and the Respondents registered and used these domain names in bad faith.

The relief sought by the Complainants is to transfer the domain names to “the Complainants” without further specification.

In Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638, a previous panel determined that a complaint could be submitted by multiple related parties where there were common interests in a single domain name. However, the panel in that case declined to transfer the disputed domain names because the complainants had not properly identified their respective trademark rights or described the rights of each complainant in respect of the remedy. Nor had the complaint clearly specified the remedy sought.

In this present case, the joint Complainants have specified the remedy sought (transfer) but have not stated to which of the Complainants each disputed domain name should be transferred to (compare with Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513).

However, the joint Complainants have presented a complaint which clearly sets out where the respective trademark rights lie, and which contains clear evidence of the relationship between each individual Complainant. Because the relationship is such that all three companies have the same interests in the disputed domain names, with some reluctance, the Panel considers that as a practical necessity the Panel is left to choose to which Complainant each disputed domain name should be transferred to, as the Complainants themselves have failed to specify which disputed domain name should go to which Complainant. Contrast Jupitermedia Corporation and Australia.Internet.com Pty Ltd v. Spotpress Pty Ltd. trading as Internet Printing, WIPO Case No. DAU2003-0005.

The only remedies available under the Policy are cancellation or transfer of the domain name (paragraph 4(i)). In relation to the <liffespdr.com> and <nysespdr.com> domain names, the Complainants may not be able to use either domain name, because they contain a reference to the SPDR trademark which is not owned by either Complainant. In this regard the Panel notes previous decisions such as World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499 and The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010. However, given the available alternative of cancellation (which would allow the Respondents or any other person to promptly register the same domain name), the Panel believes the best course is to order a transfer of the domain name <liffespdr.com> to the Complainant LIFFE Administration and Management, and transfer of the domain name <nysespdr.com> to the Complainant NYSE Group, Inc.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names: <eliffe.com>, <enyseeuronext.com>, <liffenyse.com>, <liffespdr.com>, <nyseliffe.com>, <nysespdr.com>, <nyseeuro.com> be transferred to the Complainants as set out below.

The Panel orders that the domain names: <eliffe.com> and <liffespdr.com> be transferred to the Complainant LIFFE Administration and Management.

The Panel orders that the domain names: <nyseliffe.com>, <nysespdr.com>, <nyseeuro.com>, <liffenyse.com> be transferred to the Complainant NYSE Group, Inc.

The Panel orders that the domain name: <enyseeuronext.com> be transferred to the Complainant Euronext N.V.

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John Swinson
Sole Panelist

Dated: March 20, 2008