Complainant is OANDA Corporation, United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States of America.
Respondent is San Feng Zhang, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 29, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 24, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 4, 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. 4. Factual Background Complainant is a United States based corporation that provides currency exchange and financial information services and products, for example by providing a platform for trading cryptocurrency such as Bitcoin. Complainant provides its services word wide in nearly every instance in connection with its OANDA mark. Complainant is the owner of United States trademark registration number 2874938 for OANDA, registered on August 17, 2004. In addition, Complainant has registered its right to use its OANDA mark in other jurisdictions around the world, including China. Complainant also owns the Respondent registered the Domain Name on September 4, 2020. The Domain Name resolves to a website which, at the time of the filing of the Complaint, displayed the OANDA mark and logo; and claims to be Complainant. The website also displays a disclaimer on each of its webpages, which states in part: (i) “© 1996-2020 OANDA Corporation”; and (ii) “[b]efore you trade, please carefully review the Product Disclosure Statement and Financial Service Guide of oanda.com,” which is an express reference to OANDA's official website. At the time of the Decision, the Domain Name resolves to an inactive page. On November 30, 2020, prior to the filing of the Complaint, Complainant sent a letter to Respondent by email to the email address identified in the “Contact information” section of Respondent’s website, to inform Respondent of Complainant’s trademark rights, in an attempt to request Respondent to cease and desist using the Domain Name. Respondent did not respond. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has a trademark registration for the OANDA mark and owns a domain name incorporating the OANDA mark. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known OANDA products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal 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.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the OANDA mark, which have been registered since at least as early as 2004, well before Respondent registered the Domain Name on September 4, 2020 as noted above. Complainant has also submitted evidence, which supports that OANDA is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the OANDA mark. With Complainant’s rights in the OANDA mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s OANDA mark. This mark, which is fanciful and inherently distinctive, is recognizable in the Domain Name. The complete incorporation of the OANDA mark and the voluntary addition of the term “hk-“, where ”hk” is commonly known geographical reference to Hong Kong, China, in the Domain Name Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the OANDA mark, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the OANDA trademarks or to seek registration of any domain name incorporating the OANDA trademark. Respondent is also not known to be associated with or commonly known with the OANDA mark. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website which, at the time of the filing of the Complaint, displays the OANDA mark and the OANDA logo; and claims to be Complainant. The website also displays a disclaimer on each of its webpages, which states in part: (i) “© 1996-2020 OANDA Corporation”; and (ii) “[b]efore you trade, please carefully review the Product Disclosure Statement and Financial Service Guide of oanda.com,” which is an express reference to OANDA’s official website. The Respondent essentially redirected Internet users to a third party website that copied and attempted to fraudulently duplicate Complainant’s official website with Complainant’s trademark and logo, as well as reference to Complainant’s website. In creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent attempted to deceive unsuspecting Internet users into doing business with unrelated third parties by attempting to pass off as Complainant’s website. After being locked by the Registrar, and at the time of the Decision, the Domain Name resolves to an inactive website. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(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 Panel finds that Complainant provided ample evidence to show that registration and use of the OANDA mark long predates the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s OANDA mark and related services are widely known and recognized. Therefore, Respondent was likely aware of the OANDA mark when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known OANDA trademark in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the OANDA marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). Further, the Domain Name not only incorporates Complainant’s OANDA mark in its entirety, it also includes an intentional addition of the term “hk-”, which is commonly known as a geographical reference to Hong Kong, China – which suggests Respondent’s actual knowledge of Complainant’s rights in the OANDA mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. As discussed above, the Domain Name resolves to a webpage that diverts users to which, at the time of the filing of the Complaint, displays the OANDA Mark and the OANDA Logo; and claims to be Complainant. The website also displays a disclaimer on each of its webpages, which states in part: (i) “© 1996-2020 OANDA Corporation”; and (ii) “[b]efore you trade, please carefully review the Product Disclosure Statement and Financial Service Guide of oanda.com,” i.e., an express reference to OANDA's official website. The Respondent essentially redirected Internet users to a third party website that copied and attempted to fraudulently duplicate Complainant’s official website with Complainant’s trademark and logo, as well as reference to Complainant’s website. In creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent attempted to deceive unsuspecting Internet users into doing business with unrelated third parties by attempting to pass off as Complainant’s website. After being locked by the Registrar, and at the time of the Decision, the Domain Name resolves to an inactive site. Therefore, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Further, Respondent’s actions indicate that it was attempting to fraudulently present itself as Complainant. Such actions would not only be deceitful to unsuspecting Internet users, result in potential interception and improper use of the end user’s personal and financial information, but would interfere with and potentially compromise Complainant’s business. It can also result in tarnishing Complainant’s goodwill and reputation. In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy. 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 Domain Name Kimberley Chen Nobles
Sole Panelist
Date: April 16, 2021
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