The Complainant is FXDirectDealer, LLC, United States of America (“United States”), represented by Kolitch Romano LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Amass Line (pvt) Ltd, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing 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 December 21, 2020 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 amendment to the Complaint on December 21, 2020. 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” 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 January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2021. The Center appointed Zoltán Takács as the sole panelist in this matter on February 5, 2021. 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. The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background The Complainant was established in 2002 and is an international leader in online foreign exchange trading and educational services for retail and institutional clients. The Complainant currently accepts clients from approximately 180 countries. The Complainant’s trademark registrations, among others include: - the United States Trademark Registration No. 4418706 for the word mark FXDD, registered on October 15, 2013 for goods and services of classes 9, 36, and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “Nice Classification”), and – the International Trademark Registration (“IR”) No. 1175697 for the word mark FXDD, registered on August 7, 2013 for goods and services of classes 9, 36 and 41 of the Nice Classification. Since May 22, 2002 the Complainant owns the domain name The disputed domain name was registered on September 13, 2017, and resolves to a website designed to suggest association with the Complainant and its goods and services. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name, which fully incorporates its FXDD trademark, is confusingly similar to its FXDD trademark. The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant claims that the Respondent registered the disputed domain name with knowledge of its FXDD trademark and has been using the disputed domain name to create a false impression of affiliation with the Complainant for commercial benefit. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced proper evidence of having registered rights in the FXDD trademark and for the purpose of this proceeding the Panel establishes that the United States Trademark Registration No. 4418706 and the IR No. 1175697, both for the word mark FXDD, satisfy the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s FXDD trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The disputed domain name incorporates the Complainant’s FXDD in its entirety. The addition of the term “trades” does not prevent finding of confusing similarity. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the FXDD trademark. The Complainant has never authorized the Respondent to use its FXDD trademark in any way, and its rights in the FXDD trademark precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith. According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an affiliated entity can itself create a presumption of bad faith. The widely used FXDD of the Complainant has no dictionary meaning; it is invented by the Complainant and therefore highly distinctive. In the Panel’s opinion, the only conceivable explanation for the Respondent’s choice to register the disputed domain name that reproduces the Complainant’s trademark is to exploit the reputation behind the FXDD trademark without any authorization or rights to do so. The website to which the disputed domain name points prominently features the Complainant’s stylized FXDD trademark; contains, with slight variations, texts copied from the Complainant’s brochure; asserts affiliation with a former employee of the Complainant; cites the Complainant’s license number as its own; and, alleges sponsoring of the same football team the Complainant sponsors. These facts and circumstances in the Panel’s view clearly evidence that the Respondent was aware of the Complainant’s trademark and business when obtaining the disputed domain name and has been using it with obvious intent to confuse Internet users and create a false impression of an association with the Complainant and its activities. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or website under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy and 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 name Zoltán Takács
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: February 17, 2021
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