Decision for dispute CAC-UDRP-108940

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

In these proceedings, the Complainant relies on the following trademarks:

- XETRA (word), German Trademark Registration No. 39654281, registered as of December 13, 1996, in the name of Deutsche Börse AG (the Complainant), duly renewed;

- XETRA (word & device), German Trademark Registration No. 39835159, registered as of June 24, 1998, in the name of Deutsche Börse AG (the Complainant), duly renewed;

- XETRA (word), EU Trademark Registration No. 000530469, registered as of April 17, 1997, in the name of Deutsche Börse AG (the Complainant), duly renewed;

- XETRA (word & device), EU Trademark Registration No. 000962787, registered as of October 21, 1998, in the name of Deutsche Börse AG (the Complainant), duly renewed;

- XETRA (stylized), EU Trademark Registration No. 013142369, registered as of August 4, 2014, in the name of Deutsche Börse AG (the Complainant), duly renewed;

- XETRA (word), International Trademark Registration No. 678280, registered as of June 13, 1997, in the name of Deutsche Börse AG (the Complainant), duly renewed.

It is worth noting that, the Complainant owns quite a few “XETRA” trademarks around the world, which have not been cited in these proceedings.

The Complainant is a well-known large Germany-based international exchange organization and innovative market infrastructure provider, specialized in the entire financial market transaction process chain. This includes the provision of indices, data, software, SaaS and analytical solutions as well as admission, trading and clearing. Additionally, it comprises services for funds, the settlement and custody of financial instruments as well as the management of collateral and liquidity. As a technology company, the Group develops IT solutions and offers IT systems all over the world. In its current form, it was founded in 1993. With more than 17000 employees nowadays, the Complainant is active in the major financial centers worldwide (see www.deutsche-boerse.com). XETRA is its fully electronic trading system, introduced back in 1997.

The Complainant owns a fair-sized portfolio of trademarks worldwide including the wording "XETRA", among which a German/home registration dating back to December 1996. It also owns related domain names, like <xetra.com> since October 21, 1998.

The disputed domain name <xetracapital.com> and <xetragroup.com> were registered by the Respondent on April 6, 2022 and June 12, 2023, respectively, as per the Registrar’s verification.

COMPLAINANT

The Complainant first submits a request for consolidation of proceedings, to include both disputed domain names.

On substance, the Complainant then contends that the disputed domain names are confusingly similar to its XETRA trademark, as they are identical to this wholly incorporated trademark. This last element is sufficient to support the finding that the disputed domain names are confusingly similar to the Complainant's trademark. Indeed, the mere addition of the descriptive terms “capital” and “group” cannot change the overall impression as to the most likely connection with the trademark XETRA of the Complainant. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain names because the Respondent is not known by the disputed domain names, the Complainant is not affiliated with the Respondent nor has it ever authorised the Respondent to register its trademark as a domain name, and the Complainant has no business with the Respondent.

According to the Complainant, given the seniority, distinctiveness and worldwide reputation of the XETRA trademark, the Respondent registered the disputed domain names with full knowledge of the Complainant's trademark in an intentionally designed way, with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain names were registered in bad faith.

With respect to use in bad faith, the Complainant points out that the Respondent has used the disputed domain names in order to create websites that could mislead the public with their content, a fact that -in combination with the incorporation of a famous trademark in a domain name proves use in bad faith.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain names in bad faith, and requests the transfer of the disputed domain names to the Complainant.

RESPONDENT

No administratively compliant Response has been filed.

PRELIMINARY ISSUE 1: CONSOLIDATION

Before launching itself into the usual threefold test, according to paragraph 4(a) of the Policy, the Panel needs to address the issue of the request by the Complainant for consolidation of the two (2) disputed domain names. This matter was well presented by the Panel in WIPO Case No. D2010-0281 Speedo Holdings, among others.

The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") stipulate under Rule 3(c):

The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

The Rules have a further provision, Rule 10(e), which enables the Panel to decide in its own discretion upon a request for consolidation:

A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

Based on these provisions alone, it could be inferred that, in the present case, consolidation is possible, as both the disputed domain names seem to have been registered by the same domain-name holder. Indeed, despite the apparently different registrant organizations mentioned in the Registrar’s verification email dated August 25, 2026, it is quite obvious that the effective registrant of both the disputed domain names is a certain individual named “Juan Albrecht” / “Juan Ignacio”), who wrote to the Center and presented himself as the Respondent on August 25, 2026 and September 17, 2026.

Also, as decided in the above-mentioned WIPO Case No. D2010-0281, “consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy”.

With all the above in mind, the Panel decides to admit, in its sole discretion, the Complainant’s request for consolidation of the two cases at hand, which is consistent with the UDRP Policy and the Rules and seems to be procedurally efficient and fair and equitable to all parties.

PRELIMINARY ISSUE 2: CONSENT TO TRANSFER

A second preliminary issue for the Panel to decide upon is the fact that Respondent consents to transfer the disputed domain names to Complainant. This has been made clear to the Center and to the Panel, through Respondent’s emails of August 25, 2026 and September 17, 2026, whereby Respondent stated the following, among others:

“[…] I fully agree to yield and transfer the domain name to the Complainant.”;

“[…] I'm reaching out because I'm receiving notifications related to the transfer of the domains (xetragroup.com and xetracapital.com) that we agreed to hand over, but I'm not entirely sure whether I need to take any action on the platform to approve/confirm the transfer, or if the process is automatic.”

In NAF/FORUM case FA2409002114256, Farallon Capital Management, L.L.C. v. Name Redacted, the panel reasoned in this way:

“Paragraph 4.10 of the WIPO Jurisprudential Review 3.0 sheds some light to this rare scenario. Indeed, past panels have faced such behavior from respondents, based on various motives. According to WIPO “many panels will order the requested remedy solely on the basis of such consent”, as happened for example in WIPO Case No. D2000-0207, Williams-Sonoma, Inc. v. EZ-Port, where the panel decided as follows:

Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the Panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to "ensure that the proceeding takes place with due expedition." Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.

Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.”

Also, in NAF/FORUM case FA2103001935607, Blueprint Studio, LLC d/b/a Bergman & Bowen v. George Rudderow it was decided that: “In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis.”  

Therefore, this Panel, in recognition of the common request of the parties, in the interest of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the disputed domain names to the Complainant.

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As a result of the above conclusion, the Panel considers not necessary this first element. The Panel will, therefore, not examine the requirement under paragraph 4(a)(i) of the Policy.

As a result of the above conclusion, the Panel considers not necessary this second element. The Panel will, therefore, not examine the requirement under paragraph 4(a)(ii) of the Policy.

As a result of the above conclusion, the Panel considers not necessary this third element. The Panel will, therefore, not examine the requirement under paragraph 4(a)(iii) of the Policy.

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.

The Respondent has voluntarily abandoned all of his rights on the disputed domain names.