The Complainant is Ironfx Global Limited of Limassol, Cyprus, internally represented.
The Respondent is Whois Agent, Domain Protection Services., Inc. of Denver, Colorado, United States of America (“United States”) / Nikolay Krasnov of Saint Petersburg, Russian Federation (“Russia”). 2. The Domain Names and Registrar
The disputed domain names and are registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 30, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 7, 2017. 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
The Complainant is an online foreign exchange derivatives service provider registered and existing under the laws of the Republic of Cyprus.
The Complainant owns the following trademark registrations:
- United States trademark registration for the IRONFX mark, Registration No. 4362855, registered on July 9, 2013, in class 36;
- International trademark registration for the IRONFX mark, Registration No. 1129032, registered on June 28, 2012 in class 36.
The Complainant is also the registered owner of the domain name which was registered on February 10, 2008.
The first disputed domain name was registered on December 26, 2016, while the second disputed domain name was registered on April 22, 2017.
On April 11, 2017, the Complainant sent a cease-and-desist letter to the Respondent, the Registrar and the web hosting provider in regard with . On April 19, 2017, the Complainant sent the Notice of Infringement in regard with .
The disputed domain names were linked to websites which replicated the layout of the Complainant’s website under as well as its copyrighted content, logo and images that are solely associated with the Complainant. The websites offered financial services similar to those offered by the Complainant. Currently, the disputed domain names are inactive. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain names are confusingly similar to its IRONFX mark. The Complainant emphasizes that the disputed domain names contain the IRONFX mark in its entirety. According to the Complainant, the addition of the words ‘ltd" and "lrnt” is not sufficient in itself to avoid any risk of confusion as they are generic terms describing the fact that the disputed domain names are operated by a limited liability company which uses the name IronFX as its business name.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant contends that it has not authorized, licensed or otherwise consented to the use of its mark or to the registration of the disputed domain names incorporating its IRONFX mark.
Thirdly, the Complainant contends that the Respondent has registered and used the disputed domain names in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant asserts that the Respondent registered the disputed domain name nine years after the registration of the Complainant’s mark. Furthermore, the disputed domain name was registered after the Complainant sent the cease-and-desist letter and the Notice of Infringement to the Respondent in regard with . The Complainant also argues that the websites maintained under the disputed domain names replicate its own website, logo and copyrighted content which justifies bad faith finding. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the IRONFX mark in its entirety, with an addition of the letters “ltd” separated with a hyphen. The disputed domain name contains the IRONFX mark in its entirety, with an addition of the letters “lmt” separated with a hyphen. Neither the term “ltd” nor the term “lmt” serves to distinguish the disputed domain names from the Complainant’s mark.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.com” may generally be disregarded as a gTLD being simply a necessary component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s IRONFX mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Complainant has not authorized, licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain names incorporating its IRONFX mark; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In particular, a use of a domain name, including a registered trademark, for the purpose of creating a website that mirrors this mark and offers similar services to those offered by the trademark owner cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the IRONFX mark was registered years before the registration of the disputed domain name . Secondly, the disputed domain name was registered after the Respondent received the formal notifications from the Complainant regarding its rights in the IRONFX mark. Therefore, the Panel conduces that the Respondent knew or should have known about the Complainant’s rights while registering both disputed domain names. Moreover, the Panel notes that the fact that the Respondent used the privacy shield while registering the disputed domain names is a further evidence of bad faith.
Secondly, the Respondent also used the disputed domain names in bad faith. This is evidenced by the screenshots of the websites that the disputed domain names resolved to. They both mirrored the Complainant’s official website, the IRONFX mark and the Complainant’s copyright materials. Furthermore, both websites offered financial services alike the Complainant. For these reasons, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website. Currently, the disputed domain names are inactive. However, as it has been found in several previous UDRP cases, the fact that the disputed domain names are inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: July 13, 2017
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