Decision for dispute CAC-UDRP-107165

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

The Complainant is the owner of various trademark registrations for “EUREX”, including the following:

 - International trademark registration No. 635015 for EUREX, registered on 5 December 1994;

- International trademark registration No. 812147 for EUREX, registered on 28 July 2003;

- European Union trademark registration No. 744763 for EUREX, registered on 8 June 1999;

- European Union trademark registration No. 3378973 for EUREX US, registered on 21 March 2005;

- Germany trademark registration No. 30309064 for EUREX, registered on 24 April 2003;

- Germany trademark registration No. 39756930 for EUREX, registered on 2 February 1998;

- United Kingdom trademark registration No. UK00001561905 for EUREX, registered on 14 July 1995;

- United States trademark registration No. 2941068 for EUREX, registered on 19 April 2005;

- Malaysia trademark registration No. 06018304 for EUREX, registered on 24 September 2008; and

- India trademark registration No. 1500199 for EUREX, registered on 1 November 2006.

 The Complainant owns and operates various domain names, including:

• <eurex.com>, registered on 9 August 1996; and
• <eurexchange.com>, registered on 13 March 1998.

The disputed domain name was registered on 4 December 2024, and at the time of filing the Complaint, resolved to an inactive webpage.

The Complainant is one of the leading market place organisers for financial services particularly trading in shares and other securities worldwide. The Complainant is also a transaction service provider who affords international companies and investors access to global capital markets by means of advanced technology. Its products and services portfolio covers the entire process chain from order input to custody of shares and derivatives. The Complainant has offices worldwide and employs more than 10000 employees, who service its customers all over the world. The Complainant also operates the Frankfurt stock exchange.

Since 1998, the Complainant’s EUREX brand has provided highly efficient liquidity pools. The EUREX futures and options exchange is one of the world’s largest international market organizers for the trading of futures and options on equities and equity indices, as well as of interest rate derivatives. Today, around 370 market participants in 33 countries are connected to the EUREX trading system. More than 7,000 traders are registered with EUREX. An integral part of the global derivatives market, the Complainant, through its EUREX brand, closes record volumes of traded contracts almost every year.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The language of the registration agreement is Chinese.

The Complainant has requested that the language of proceedings was English.

Having considered all circumstances of the case, the Panel has decided that it would be fair and equitable to all parties to have the language of the proceedings be English as:

• the disputed domain name consists of Latin characters;

• the disputed domain name consists of the terms “Eurex”, which is the Complainant’s trademark, and the word “Zurich”, which is the English name for the city of Zürich in Switzerland;

• the Respondent did not object to English being the language of the proceedings; and

• requiring the Complainant to translate the Complaint into Chinese would involve further cost and delay to the proceedings.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Complainant has provided evidence that it owns registered trademark rights in the EUREX mark.

In this case, the disputed domain name consists of the Complainant’s EUREX trademark in its entirety with the addition of the suffix “ZurichAG”. The addition of the suffix “ZurichAG” is insufficient to distinguishing the disputed domain name from the Complainant’s trademark. Thus, the disputed domain name, which in this case incorporates the Complainant’s mark in its entirety is confusingly similar to the Complainant’s mark.

As for the generic Top-Level Domain (“gTLD”) “.com”, it is well established that the gTLD is not relevant to the issue of identity or confusing similarity between the Complainant’s trademark and the domain name in dispute (see WIPO Overview 3.0, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it has been the registered owner of the EUREX mark long before the date that the disputed domain name was registered and that it has not authorised the Respondent to use the Complainant’s trademark. There is no evidence that the Respondent is commonly known by the disputed domain name.

The Respondent did not submit a Response and did not provide any explanation for its choice of the disputed domain name nor evidence to show rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

 C. Registered and Used in Bad Faith

The Complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant’s trademark was registered years before the registration of the disputed domain name. The disputed domain name incorporates the entirety of the Complainant’s EUREX mark with the addition of the suffix “ZurichAG”. The disputed domain name also resolves to an inactive webpage and given that that Respondent fails to provide a response would require an analysis of passive use. It has long been established that the lack of use of a disputed domain name will not prevent the finding of bad faith use and registration. The common test panelists use in cases of passive holding is that of totality of circumstances. Some factors have received more consideration than others in applying the passive holding doctrine, including: (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.

Given the particular circumstances of this case, the distinctive nature of the Complainant's trademark, the degree of the Complainant's reputation, the Respondent concealing its identity and the implausibility of any good faith use to which the domain name may be put, the Panel is persuaded by the evidence that the Respondent registered and was using the disputed domain name in bad faith with the aim of specifically targeting the Complainant.

The Panel notes that the Respondent failed to submit a response and provided no explanation nor evidence to rebut the Complainant’s case. The Respondent also registered the disputed domain name under a fictitious name, which provides yet another indication of bad faith.

Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.