Decision for dispute CAC-UDRP-106151

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner of numerous trade mark registrations in numerous jurisdictions for trade marks that incorporate or comprise the term EUREX.  These include: 

(i)     International trade mark no. 635015 for EUREX filed on 5 December 1914 in classes 9, 35, 36, and 42, which has proceeded to registration in 6 territories;

(ii)    International trade mark no. 812147 for Eurex as a standard character mark filed on 28 July 2003 in classes 9, 16, 35, 36, 38, 41, and 42, which has proceeded to registration in 11 territories; and 

(iii)   European Union trade mark no. 744763 for EUREX as a word mark in classes 9, 16, 35, 36, 38, and 42.

The Complainant is located in Germany and is a market place organiser for trading in shares, derivatives and other securities.  The Complainant is also a transaction service provider, providing international companies and investors with access to global capital markets.  It has customers in Europe, the USA and Asia, more than 10,000 employees at locations in Germany, Luxemburg, Switzerland and the USA, as well as at representative offices in London, Paris, Chicago, New York, Hong Kong, Dubai, Moscow, Beijing, Tokyo and Singapore. 

The Complainant's group organises one of the world’s largest derivative markets under the trade mark EUREX, operates a clearing house under the name EUREX CLEARING and uses the name EUREX REPO in respect of securities financing.

The Complaint relates to 49 domain names registered through a number of different registrars in respect of a mixture of old and new general top level domains and also ".co" and ".ai" country code top level domains.  

All of the disputed domain names incorporate in one form or other the term "eurex", or terms that are arguably variants or misspellings of the same (examples being "eurax", "eprex", or "urex").   

All 49 disputed domain names were registered in the period 10 October 2023 to 7 January 2024.   

All, or nearly all, of the disputed domain names have been used for websites that take a number of different formats and which offer trading platform services in relation to either one or combination of different financial assets.  A large number of these website appear to be offering cryptocurrency trading services, although many also appear to offer trading services in relation to foreign exchange, CFDs, and/or stocks and securities.   

At the date that the proceedings were commenced, the publicly available WhoIs details for the disputed domain names did not disclose the underlying registrants of any of the domain names.  In the course of these proceedings and in response to registrar verification requests made by the UDRP provider, the Czech Arbitration Court, the recorded underlying registrants held by those registrars have mostly been disclosed, although the registrars Gransy s.r.o and Key-Systems GmbH have failed to do so.  The records disclosed identify 14 different registrants.   

Below is a table identifying each of the disputed domain names, and in respect of each domain name, the relevant registrar and the registration details (if any) provided for that domain name.   Each domain name is also allocated a number in this table which is used to identify that domain name in this decision.   It is a different number from that used by the Complainant in the Complaint and to aid understanding, the corresponding identification number used by the Complainant is also provided. 

The Complaint

A large part of the Complainant's Amended Complaint is directed to the issue of "consolidation" of proceedings in relation to all of the disputed domain names, notwithstanding that these domain names are registered in a number of different names. The Complainant's contentions in this respect are set out in the part of the Procedural Factors segment of this decision, which deals with consolidation.  

The Complainant contends that its EUREX trade mark is well known in respect of financial services, and in particular in respect of the operation of a trading platform.    Each of the disputed domain names is said to "contain as their sole distinctive element 'EUREX' or slight variations thereof".  Also, the Complainant contends that where it EUREX mark is not contained in its entirety in any disputed domain name, the content of the website operating from that disputed domain name "serve[s] to affirm a finding of confusing similarity".   

The Complainant further provides printouts in respect of a large number of websites that operate from the disputed domain names. These are arranged in a series of exhibits, grouped by reference to what are said to be different categories of the domain name identified by reference to how those domain names have been constructed (and in particular by reference to what other words are used in the domain name in conjunction with the term EUREX or a variant of the same). 

The Complainant contends that by "using EUREX as [the] sole distinctive element of the disputed domain names and [in some cases] imitating [the] Complainant’s corporate design" the registrants of these domain names are "clearly trying to impersonate the Complainant".   The Complainant also refers to the fact that in the case of many of the relevant websites, no physical address nor a competent regulatory authority is listed, or that addresses given are false, and that in some cases the content of the website appears to be AI generated. Further, the Complainant claims that many of the registration details given in respect of the disputed domain names are "fake or at least implausible".

In these circumstances, the Complainant contends that the registrants of the disputed domain names have no right or legitimate interest in those domain names, and that the disputed domain names have been registered and used in bad faith.  So far as bad faith is concerned, the Complainant also claims that the use made of the disputed domain names falls within the scope of paragraph 4(b)(iv) of the Policy.  

The Response

A Response was filed by what appears to be an individual with the name Costas Tsolakis.   The first sentence of the Response started "We are not the owners of many of the domains mentioned in this report", and alleged that "[t]he attacking party lawyers are trying to create a manipulative and wrong picture of multiple websites that according to their imagination belong to the same group".  The Response then goes on to claim in respect of the domain names that the Respondent admits are under its control, as follows:

"We developed a tool that creates, with a full automation, websites that are indexing in search engines organically, our robots are scanning google trends tool (https://trends.google.com/trends/) and other tools that provides indications on trendy keywords that are popular in google searches, and then the robot creates in an automated way websites that are focus on a given (trendy) keyword/s. This was the case with “Immediate Urex Ai”, “Immediate Eprex 360”, “Immediate Eurax 24”, etc. – our robots simply spotted trendy keywords and created those websites."

The Response refers to material that is said to show, for example, that "users came to google and searched for the keyword 'Immediate Eurax 24'" and then goes on to assert:  

"no one forced them to make this search, no one “tricked” them to think they are searching for Eurax [sic!] borse or anything like this, this are users that searched for this unrelated to eurex names in google. Our bots spotted this trend and created automatically those websites"

The Response also appears to claim that persons reaching websites operating under the disputed domain names controlled by this registrant are not searching for the term "Eurex".   In support of that contention it provides a number of screenshots from the Google search console in the case of the domain names <immediateeprex360.com>, <immediateurex.ai> and  <immediateeurax24.com>.

In a further submission filed by Mr Tsolakis on the same day as the Response, he lists thirty one of the disputed domain names and states that these are the domain names to which the Response relates.  That further submission then ends: 

"I can’t say anything about the remaining domain names since I don’t manage them and don’t have access."

The Panel accepts that each of the Domain Names either contains the Complainant's EUREX mark in its entirety or what is likely to be read as a misspelling or variant of the same.   It is sufficient for a finding of confusing similarity for the purposes of the Policy that a mark in which a complaint has rights is recognisable in the relevant domain name (see section 1.7 of the WIPO Overview 3.0).    The Panel finds that this is so in respect of all of the Domain Names in this case. 

In coming to that conclusion the Panel recognises that a number of the Domain Names at first sight may not necessarily be read as containing or refer to the Complainant's mark, but the Panel accepts the Complainant's contention that in such cases it is legitimate to look at how the domain name is being used when it comes to considering whether there is confusing similarity, notwithstanding that the test here is one of an objective comparison between the relevant mark and the domain name (see the discussion in the third paragraph of section 1.7 of the WIPO Overview 3.0).   For reasons that are addressed in greater detail in this decision when considering the issue of Bad Faith, the Panel is persuaded that in these cases the websites nevertheless do involve a reference to the Complainant's mark and that this, therefore, supports a finding of confusing similarity.   

The Complainant has, therefore, to the satisfaction of the Panel, shown that each of the Domain Names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Panel is satisfied for the reasons set out below in its discussion of bad faith that each of the Domain Names was registered and is being held with the intention of taking advantage of the reputation of the Complainant's business and trade mark to redirect internet users. There is no right or legitimate interest in holding any of the Domain Name for this purpose and in the opinion of the Panel, this prima facie demonstrates that no such right or legitimate interest exists.  

Given this, the Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of each of the Domain Names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Panel is satisfied that each of the Domain Names was registered and is being held with the intention of taking advantage of the reputation of the Complainant's business and trade mark in order to draw internet users to websites controlled or operated by the Respondent. 

In this respect, the Panel rejects the Respondent's contention that the explanation and evidence that it has provided in relation to three of the Domain Names shows otherwise.  The reasons for this are as follows: 

(i)    The Respondent appears to claim that its AI system selected the Domain Names and created the websites based upon Google search data.  The Respondent identifies three of the Domain Names that do not contain the exact term "EUREX" and provides evidence to the effect that persons reaching the website operating from each of those Domain Names, has done so not because it has searched for the term "EUREX", but instead has searched for a slightly different term.  However, a large number, and arguably a majority, of the Domain Names do incorporate the term "EUREX".  Accordingly, this explanation and evidence appears to be tantamount to an admission that in the case of those Domain Names that do include the term EUREX, internet users are reaching the Respondent's website because they are searching for that term.

(ii)  All of the Domain Names are being used for websites that offer some form of financial services trading platform.   Why the websites offer this particular service is not explained in the Response, but the most obvious explanation is that this service is similar to the services offered by the Complainant under the EUREX mark.  The Respondent's own description of its business model also suggests that in those cases where the Domain Name contains a variant of the EUREX mark, the reason why internet users have been directed to the website which corresponds to that Domain Name, is that they have either mistyped or misremembered the Complainant's EUREX mark.  

In the circumstances, the Panel accepts the Complainant's contentions that the Respondent's activities in this case fall within the scope of circumstances evidencing bad faith registration and use set out in paragraph 4(b)(iv) of the Policy. 

The Panel would also add that if it is being contended that choice and registration of the Domain Names is one that is entirely automatically undertaken by AI and that the AI is also automatically generating the relevant websites, this does not matter.  The fact that the AI is making these choices and undertakes these acts by reason of the Complainant's mark is sufficient to provide the Respondent with the relevant intention for the purposes of paragraph 4(b)(iv) of the Policy.

The Complainant has, therefore, to the satisfaction of the Panel, shown that each of the Domain Names has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

There are two procedural issues to consider in this case.  The first is the failure by the registrar Gransy s.r.o to disclose the underlying registration details for 8 of the disputed domain names (i.e. disputed domain names 32 to 39) and the failure by Key-Systems GmbH to disclose the underlying registration details for 4 of the disputed domain names (i.e. disputed domain names 44 to 47).  

Registrar non-compliance

In the case of Key-Systems GmbH, in response to a verification request from the CAC dated 18 January 2024, the registrar stated: 

"We have contacted our reseller in order to obtain the requested information and we'll get back to you as soon as possible." 

In the case of Gransy s.r.o, the registrar stated in an email dated 29 January 2024 stated:  

"please note that the customer promised us to send the registrant data. I am trying to contact the company manager directly because our company as the registrar of the mentioned domain names has only the registrant data which we sent to you"

In the opinion of the Panel the responses of these two registrars do not provide an acceptable excuse for the non-provision of the information requested.   Paragraph 1.1 of Appendix E of the Temporary Specification for gTLD Registration Data, provides that in the case of UDRP proceedings:    

"The Registrar MUST provide the UDRP provider with the full Registration Data for each of the specified domain names, upon the UDRP provider notifying the Registrar of the existence of a complaint, or participate in another mechanism to provide the full Registration Data to the Provider as specified by ICANN" (capitalisation in original text).

It is a Registrar's responsibility to ensure that it complies with that obligation, and it is, therefore, its responsibility if that information is held by another party, such as a reseller, to ensure whether by means of enforcement of its contractual obligations with that reseller or otherwise, that this information is actually provided. 

For reasons that are provided in the context of the discussion of consolidation set out below, in this particular case it may be that this failure has had little or no practical impact on the conduct of these proceedings. Nevertheless, failure by registrars to comply with their obligation in this respect threatens the proper operation of the UDRP. Accordingly, the CAC is invited to bring the failures of the registrars in this case to the attention of ICANN.

Consolidation

The Complainant seeks "consolidation" of proceedings in relation to the 49 disputed domain names, notwithstanding that the responses provided by various registrars disclose different registration details in respect of many of these domain names. 

In the view of the Panel and for the reasons set out in some detail by the Panel in Meta Platforms, Inc., Instagram, LLC, WhatsApp, LLC v Domains By Proxy, LLC and others WIPO Case No. D2022-0212, arguably "consolidation" is the wrong terminology to be used when dealing with a request by a complainant for proceedings to continue against multiple respondents.  But it is nevertheless the language used in most decisions in relation to this issue and is also used in section 4.11.2 of the WIPO Overview 3.0 under the heading "Complaint consolidated against multiple respondents."  The Panel will, therefore, also use it in this case.

As is described both in Meta Platforms, Inc., Instagram, LLC, WhatsApp, LLC v Domains By Proxy,LLC  and others WIPO Case No. D2022-0212, and section 4.11.2 of the WIPO Overview 3.0, when considering whether it is appropriate to consolidate proceedings against multiple respondents:  

"panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario"

In the opinion of the Panel and again for the reasons it set out in the Meta Platforms, Inc case, there are strong arguments that the requirement of "common control" is no longer fit for purpose and it would be better if it were replaced with a provision that gave a discretion to panels to allow claims brought against multiple names registrants, subject to the proviso that the panel be satisfied that doing so would be equitable and procedurally efficient (see paragraph 6.16 of the decision in the Meta Platforms, Inc case).   However, for reasons also given in that case, it is a requirement that has a clear foundation in paragraph 3(c) of the Rules, and, therefore, as matters stand the Panel is required to follow it.   

The Complainant also accepts that it must show "common control" and seeks to show that this is the case in its Amended Complaint.    The facts said to show that  common control are as follows:

(i)    The timing of the registrations of the disputed domain names, which all occur within a 3 month period;

(ii)   The structure of the disputed domain names themselves which are said to use similar words in conjunction with the term EUREX and/or similar misspellings of that term; and 

(iii)   The fact that all, or nearly all, of the disputed domain names are being used to promote various trading platforms from various websites. 

In the absence of any evidence or argument to the contrary, these arguments were likely to have been sufficiently persuasive for Panel to have allowed full consolidation to take place.    The difficulty in this case is that at least one of the registrants has participated in these proceedings and contends that although it controls 31 of the disputed domain names, it is not responsible for the others; claiming that these other domain names are controlled by other entities that are using similar Google scanning techniques to identify and register domain names and create websites that are in a form that is similar to but in places different from those of this registrant. 

These assertions are also to some extent supported by the following:

(a)    Although the registrars Key-Systems and Gransy have failed to disclose the underlying details for the disputed domain names under their control, Mr Tsolakis has freely and openly admitted that all but one of these domain names are under his control; 

(b)   Although there are similarities between all the websites operating from the disputed domain names, they use a number of different templates and formats which are often reused for several of the disputed domain names.  A number of different formats appear to be used in connection with websites operating from the disputed domain names that MrTsolakis admits he controls, but as far as the Panel can tell given the way that the Complainant has presented its case, none of these particular templates are also used in connection with any of the other disputed domain names.

Accordingly, the Panel is prepared to take the contentions of Mr Tsolakis in this respect at face value, and in light of this the Panel concludes that whatever the true position might be, the Complainant has failed to satisfy the Panel that any domain names other than those admitted to be controlled by Mr Tsolakis are also controlled by him. 

As a consequence, the Panel finds that these proceedings should continue in respect of 31 of the domain names, i.e. domain names no.s 1 to 19, 32 to 39 and 44 to 47, but should be terminated without prejudice to the Complainant's right to commence fresh proceedings in relation to the others.  

References to the "Domain Names" in these proceedings is accordingly a reference to these 31 domain names and the term "Respondent" is used to describe the controller of the Domain Names only.

In coming to this conclusion, the Panel wishes to make it clear that it is not saying that all the other registration data provided in relation to the remaining disputed domain names is accurate.  Indeed, the Panel accepts that there are good reasons to believe that notwithstanding the use of different registration details, many of these domain names are in fact under common control.  However, these are arguments that it is for the Complainant to advance, should it wish to do so, in fresh proceedings commenced under the Policy in respect of the same.    

Further, there are clearly sets of the disputed domain names that do share the same registration details.   In this respect, the most numerous are domain names 27 to 31 that are all registered in the name of Aron Masih.   Given this, the Panel did consider making an order in the form of that made by it in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987), WIPO Case No. D2010-0894, whereby the Complainant, if it so wishes, would be able to pay an additional fee in respect of these domain names, such that the proceedings could be formally deemed to continue as two separate sets of proceedings and whereby the Panel issued a decision in respect of all those domain names without the need for the Complainant to file a fresh complaint.    Ultimately, however, the Panel has decided that it would not be convenient to do so in this case.  The reason is that the Complainant might wish to argue in fresh proceedings that these are under the common control with other disputed domain names.   

Also, if the Panel were to make an order in respect of these domain names, why not make a similar order in relation to others that share common registration details, and, if so, which ones?  Further, the making of such an order although it would enable the Complainant to get a in speedier decision in the case of some of the remaining disputed domain names, it would also delay the provision of a decision in respect of the 31 Domain Names at a time when many of those Domain Names remain in active use.  As a result the Panel is not convinced that the making of such an order and the adoption of this procedure would be the most procedurally efficient way forward in the particular circumstances of this case.       

The Complainant brought a Complaint in respect of 49 domain names.  The Panel was required to address two procedural issues in this case; namely (i) the failure by two registrars to provide registration details in response to the UDRP provider's registrar verification requests; and (ii) a request by the Complainant to "consolidate" proceedings in relation to domain names registered in different names.   

The Panel concluded that the failures by the registrars Key-Systems GmbH and Gransy s.r.o were not excused by any difficulty faced in obtaining that information for third parties and the Panel invited the UDRP provider to draw these failures to the attention of ICANN. 

The Panel also concluded that notwithstanding the similarities between the disputed domain names, the fact that the domain names had all been registered in a three month period and the fact that each domain name appeared to be being used in respect of the same sort of website, this was an unusual case where one registrant had actively participated in the proceedings and asserted that it only controlled 31 of the domain names. Further, the format of the websites operating from the domain names was not obviously inconsistent with that claim and the Panel noted the fact that this registrant had openly admitted that it controlled a number of the domain names, even though in the case of some of these domain names the registrars had failed to disclose the underlying registrant.   As a consequence, the Panel was prepared to take the registrant's claims as to control at face value. The Panel, therefore, allowed the proceedings to continue in respect of 31 of the domain names (the "Domain Names") but determined that proceedings be terminated in respect of the remaining domain names without prejudice to the Complainant's right to bring fresh proceedings in respect of the same. 

So far as the Complainant's substantive claims against the remaining 31 domain names were concerned, the Panel concluded that the Complainant had demonstrated that it had trade mark rights in term EUREX and that this term was recognisable in all of the Domain Names either as a reproduction of the entirety of that mark or as a misspelling or mistyping of the same.    The Complainant had thereby made out the requirements of paragraph 4(a)(i) of the Policy.

The Panel was also satisfied that the Complainant had demonstrated that each of the 31 domain names had been registered with the intention of drawing internet users to websites operating from these domain names by reason of the similarity of those domain names with the Complainant's trade mark.  In coming to that conclusion the Panel relied upon the fact that (a) the Respondent had described its business model as using AI to identify from Google search data certain domain names for registration and then generate websites, and (b) the websites operating from the Domain Names all offered trading platform services similar to those of the Complainant. 

In the circumstances, the Complainant had also made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy.

The Panel was also of the view that even if the domain names and the form of the websites had been automatically generated by AI controlled by the Respondent, the fact that the AI was making these choices and undertaking these acts by reason of the Complainant's mark was sufficient to provide the Respondent with the relevant intention for the purposes of paragraph 4(b)(iv) of the Policy.