The Complainant is FXCM Global Services, LLC, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private by Domains By Proxy, LLC, United States /John Lay, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, 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 October 25, 2021, 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 October 25, 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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 29, 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 BackgroundThe Complainant operates as a retail broker in the foreign exchange (“Forex”) market. It provides online Forex trading, CFD trading, and related services.
It owns the trademark FXCM, for which it enjoys the benefit of registration in multiple jurisdictions, including the United States (Reg. No. 2,620,953, registered on September 17, 2002).
According to the WhoIs records, the disputed domain name was registered on July 20, 2021. As of the filing of the Complaint, the disputed domain name did not resolve to a web page. However, the Respondent has set up MX records associated with the disputed domain name, enabling the sending of email messages using the disputed domain name.
The Respondent did not reply to cease and desist communications the Complainant sent on September 6, 2021 concerning the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly SimilarThis element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the FXCM mark by providing evidence of its trademark registrations.
The disputed domain name incorporates the FXCM mark in its entirety with the term “malaysia”, which does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s FXCM mark. See WIPO Overview 3.0, section 1.8. The FXCM mark remains sufficiently recognizable for a showing of confusing similarity under the Policy.
The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts, among other things, that:
- The Complainant has not licensed or authorized the Respondent to use the FXCM mark in a domain name or otherwise, and there is no evidence the Respondent has any rights to the term “fxcm”.
- The non-use of the disputed domain name in connection with an active website is not a bona fide offering of goods or services.
- The Respondent is not commonly known by the term “fxcm” nor is offering any legitimate goods or services by the term “fxcm”. Therefore, there is no plausible reason for the registration of the disputed domain name, other than the motive of taking advantage of the goodwill and valuable reputation attached to the FXCM brand.
- No evidence has come to light since the disputed domain name’s registration that the Respondent had intended to use the disputed domain name in a legitimate noncommercial or fair way
The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing, and nothing in the record otherwise tilts the balance in the Respondent’s favor. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s widely-known trademark and a geographical term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad FaithThe Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location”.
Because the Complainant’s FXCM mark is well known and subject to registration in multiple jurisdictions (including the United States, where the Respondent is located), the Panel finds that the Respondent was aware of the FXCM mark when it registered the disputed domain name. The Panel finds, on these facts, that the Respondent targeted the Complainant and its FXCM mark when it registered the disputed domain name. These facts show bad faith registration of the disputed domain name.
Bad faith use is shown from the Respondent’s passive holding of the disputed domain name. Passive holding of a domain name does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest,WIPO Case No. D2012-0676, in which the panel therein found that passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy.
The following circumstances of this case demonstrate bad faith use from the Complainant’s passive holding, namely, the reputation and well-known character of the Complainant’s FXCM mark, the lack of evidence provided by the Respondent of any good faith use with regard to the disputed domain name, and the fact that the disputed domain name is comprised of the Complainant’s mark, together with a geographic term, which shows that the Respondent likely intended to divert or mislead internet users.
Furthermore, the Respondent’s establishment of MX records associated with the disputed domain name tends to support an inference of bad faith in these circumstances. If the Respondent is using the disputed domain name to send fraudulent emails – which the MX records suggest is a possibility – then bad faith use is further apparent. ESMOD v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-2865
Additionally, the lack of response by the Respondent to the cease-and-desist letter sent by the Complainant supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330.
The Complainant has successfully established the third Policy element.
7. DecisionFor 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
Evan D. Brown
Sole Panelist
Date: December 13, 2021