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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nomura International plc v. Takeshi Finance / Domains by Proxy, Inc.

Case No. D2008-0807

1. The Parties

The Complainant is Nomura International plc, London, United Kingdom of Great Britain and Northern Ireland, represented by Wildbore & Gibbons, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Takeshi Finance / Domains by Proxy, Inc., Akasaka, Japan.

2. The Domain Name and Registrar

The disputed domain name <nomuragrp.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 26, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 27, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint adding Takeshi Finance as Respondent. The Complainant filed an amendment to the Complaint on June 10, 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2008. However, the Center received two brief e-mail communications from “James McCain” who identified himself as a “Web Master Freelancer” employed by the “previous owner” of, presumably, the subject domain name. The content of these messages was limited to “[t]his domain was deactivated or cancelled already” and “[i]f anybody wants to acquire that domain name, he/she may do so anytime.”

The Center appointed Ross Carson as the sole panelist in this matter on July 11, 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.

4. Factual Background

Complainant is the registered proprietor in respect of Community Trade Mark Registration No. 2615136 for the trademark NOMURA registered March 3, 2002 in relation to services in International Classes 35 and 36. Complainant is part of a leading financial services group with 18,000 people in 30 countries whose operations include domestic retail, global markets, global investment banking, global merchant banking, and asset management. Nomura Securities, Co., Ltd. which is part of the Nomura Group is the largest Japanese financial brokerage company, having carried on business as a financial brokerage company in Japan since 1925.

The domain name in dispute was registered on April 12, 2006.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant is the registered proprietor in respect of Community Trade Mark Registration No. 2615136 for the trademark NOMURA, particulars of which are provided in paragraph 4 above.

Complainant submits that the domain name in dispute is comprised of Complainant’s trademark NOMURA, the abbreviation “grp” and the gTLD .com. Complainant states that “grp” is an obvious abbreviation for “group” and when entering the domain name one is taken to a website referring to Nomura Financial Group, it is likely that upon seeing the domain name in dispute people will believe, contrary to the fact, that there is a link between the domain name in dispute and Complainant.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that there is no evidence to suggest that, before any notice to the original Respondent of the dispute, the original Respondent made use of the domain name in connection with a bona fide offering of goods or services. Complainant further states that in view of the nature of Respondent’s business, i.e. to act as a proxy for third parties, the original Respondent cannot possibly be said to be using the domain name in connection with a bona fide offering of goods or services of relevance in this dispute.

As to the Respondent subsequently identified by the Registrar, they cannot be said to have used the domain name in connection with a bona fide offering of goods or services either. When entering the disputed domain name into a search engine, the searcher is taken to the website of Nomura Financial Group operated by Takeshi Finance who is not licensed to offer investment services.

Neither the original Respondent nor the newly identified Respondent have been commonly known by the domain name in dispute nor making a legitimate noncommercial or fair use of the domain name.

Complainant submits that use of Complainant’s trademark NOMURA as part of the domain name in dispute will divert consumers or tarnish the trade mark at issue.

A.3 Registered and Used in Bad Faith

Complainant states that it is part of a leading financial services group. Nomura Group is organized to realize synergies across its operations by bringing together the respective strengths of its business divisions including global merchant banking, global markets and global investment banking to the members of the group and their customers.

Complainant states that when its corporate name “Nomura International plc” is entered into a search engine, the searcher is taken to Complainant’s website “www.nomuraholdings.com”. When entering the domain name in dispute into a search engine, the searcher is taken to the website entitled Nomura Financial Group, an entity which has no connection with Complainant at all.

It has been reported by Finansinspektionen, the Swedish supervisory authority responsible for regulating investment services in Sweden, that Nomura Financial Group is offering investment services without the required authorization.

Based on the above submissions Complainant submits that the domain name in dispute was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which the Complainant has rights.

Complainant has established that it is registered as the owner of the registered trademark NOMURA registered as Community Trade Mark Registration Number 2615136 in connection with services in International Classes 35 and 36. Complainant’s registered trademark was registered prior to the date of registration of the domain name in dispute on February 11, 2008. Complainant is part of the Normura Group offering various financial services throughout Asia, America and Europe. Nomura Securities, Co., Ltd., part of the Nomura Group, is the largest brokerage firm in Japan and has been carrying on a brokerage business in relation to equities and bonds in Japan since 1925.

The domain name in dispute, <nomuragrp.com>, consists of Complainant’s trademark NOMURA in combination “grp” an abbreviation for “Group” and the top level domain descriptor “.com”. WIPO Administrative Panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that the domain name in dispute comprised of Complainant’s trademark NOMURA, the abbreviation “grp” suggesting that Respondent is part of the Nomura Group, in combination with the top level domain descriptor “.com” is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

Based on the evidence in the record, Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.

The web page associated with the domain name in dispute displays a series of sponsored links including links to companies offering brokerage services relating to equities and bonds in competition with Complainant’s services. UDRP decisions have consistently found that registrants that “park” their domain names that are confusingly similar to a trademark by using redirecting services with links to the goods or services of a complainant or complainant’s competitors have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

It is difficult for a complainant to prove the negative, i.e., that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that under the circumstances Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

C.1 Domain Name Registered in Bad Faith

Complainant has established that it is registered as the owner of the registered trademark NOMURA registered as Community Trade Mark Registration Number 2615136 in connection with services in International Classes 35 and 36. Complainant’s registered trademark was registered prior to the date of registration of the domain name in dispute on February 11, 2008. Complainant is part of the Normura Group offering various financial services throughout Asia, America and Europe. Nomura Securities, Co., Ltd. part of the Nomura Group is the largest brokerage firm in Japan and has been carrying on a brokerage business in relation to equities and bonds in Japan since 1925.

By reason of Complainant’s use of Complainant’s trademark NOMURA in association with financial services in International Classes 35 and 36 the for which the marks are registered, Complainant’s trademark for NOMURA and Nomura Group were widely known prior to registration of the domain name in dispute on February 11, 2008. Complainant’s registered trademark for NOMURA was registered prior to the date of registration of the domain name in dispute.

The domain name at issue, <nomuragrp.com>, consists of Complainant’s registered trademark NOMURA and common law trademark “Nomura Group” in combination with the gTLD “.com”. One member of the Nomura Group is the largest brokerage firm in Japan where, according to the Whois, Respondent Takeshi Finance is located. On this basis it is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant’s registered and common law trademark. Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the domain name <nomuragrp.com> strengthens the Panel’s inference that Respondent registered the domain name in dispute with knowledge of Complainant’s trademarks and business.

The Panel finds that Respondent registered the domain name in dispute in bad faith.

C.2. Domain Name Used in Bad Faith.

Based on the evidence on the record in this case, the Panel finds that Respondent’s use of the domain name in dispute <nomuragrp.com> to resolve to a website containing links to websites belonging to Complainant’s competitors constitutes use of the domain name in bad faith. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”)

Respondent is using the confusingly similar domain name <nomuragrp.com> to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy. The fact that Respondent is not licensed to offer investment services by regulatory authorities while using a domain name which is confusingly similar to Complainants trade marks is further evidence of use of the domain name in dispute in bad faith.

The Panel finds that Respondent used the domain name in dispute in bad faith

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 name <nomuragrp.com> be transferred to Complainant.

Ross Carson
Sole Panelist

Dated: July 24, 2008