The Complainant is FxPro Financial Services Limited of Ypsonas, Cyprus, represented by Brown Rudnick LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Fernando Gabriel Barrientos of Buenos Aires, Argentina. 2. The Domain Name and Registrar
The Domain Name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On May 23, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the Domain Name. On the same date, GoD, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2012.
The Center appointed Derek M Minus as the sole panelist in this matter on July 17, 2012. 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 was founded in Cyprus in 2006 and has quickly grown to become a leading international online foreign exchange and financial services provider with operations currently in eleven countries. The Complainant is incorporated as a company in Cyprus, registered as a foreign company in the UK and has wholly owned subsidiaries in the UK and Australia, and representative offices in the Russian Federation, Austria, Spain and France. The Russian Federation office was the first overseas office to be established in 2008, followed by the London, Austrian and French offices in 2009, the Spanish office in 2010 and the Australian office in 2011.
The Complainant is a highly regarded foreign exchange provider and has been awarded many accolades since it began operating in 2008. These include: being named “Best Forex Broker 2008” by CEO Magazine, “Best Forex Broker 2009” by World Finance Magazine, “Fastest Growing Global Forex Broker 2010” by World Finance Magazine, “Best Global Trading Platform 2010” by World Finance Magazine and the “Financial Times Investor Chronicle Award - FX Provider of the Year” in 2011.
The Complainant has spent significant sums of money promoting its name, brand and trade marks throughout the world since its launch. Highlights of such activity include a partnership with the BMW Sauber Formula 1 team in 2009, sponsorship of the World Rally Championship in 2009, sponsorship of Fulham and Aston Villa Football Clubs in the English Premier League in 2010, sponsorship of the Virgin Formula 1 team in 2010, sponsorship of the Asian Confederation Champions League football tournament in 2011, the Naming Rights Partner of the Australian Conference in the Super Rugby tournament between 2011 to 2015 and sponsorship of Monaco Football Club in the French League in 2011.
This sponsorship and marketing activity has led to prominent displays of the Complainant’s name, brands and trade marks including around and on the roof of the historic Craven Cottage stadium (Fulham FC’s stadium) in West London that is visible in aerial shots of London, on match balls, in stadiums and on team uniforms in the Australian Conference Super Rugby tournament, large track-side displays at all World Rally Championship races worldwide, and title naming rights to the Cyprus Rally (named the FxPro Cyprus Rally) and on car and driver uniforms for both the BMW Sauber and the Virgin Formula 1 teams. The combined global audience for the events that the Complainant sponsors is in the hundreds of millions worldwide.
The Complainant is the proprietor of numerous trade mark registrations for the mark FXPRO predominantly concerned with the provision of financial services via the Internet. The Complainant operates from its global website at “www.m”. The Complainant’s website received over 8 million hits in 2011 from different countries around the world. Some examples of the Complainant’s trade mark registrations are:
Trade Mark Jurisdiction Class Trade Mark No.
FXPRO
European Union
36
6460349
FXPRO TRADE LIKE A PRO
Australia
36 - financial services via the internet.
International no. 1048298
FXPRO
China
36 - financial services via the internet.
International no. 1048297
FXPRO
Cuba
36 - financial services via the internet.
International no. 1048297
FXPRO
Spain
36 - financial services via the internet.
International no. 1048297
FXPRO
France
36 - financial services via the internet.
International no. 1048297
FXPRO
Greece
36 - financial services via the internet.
International no. 1048297
FXPRO
Italy
36 - financial services via the internet.
International no. 1048297
FXPRO
Russian Federation
36 - financial services via the internet.
International no. 1048297
FXPRO TRADE LIKE A PRO
Turkey
36 - financial services via the internet.
International no. 1048298 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
(i) The Complainant is the owner of the FXPRO trade mark and by reason of its extensive use, promotion and advertising, is the proprietor of substantial goodwill and reputation in the trade mark in the field of financial services offered and delivered in particular by means of the Internet. The Domain Name is confusingly similar to the Complainant’s trade mark.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
(1) it has not been authorized by the Complainant to register or use the Domain Name,
(2) it has not made a legitimate noncommercial or fair use of the Domain Name and,
(3) its actions in using the Domain Name to attract Internet users to a website offering information about the Complainant’s competitor’s products does not constitute a bona fide offering of goods or services.
(iii) The Respondent registered and is using the Domain Name in bad faith because:
(1) the Respondent is intentionally using the Domain Name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark.
(2) the Respondent by providing advertising links to the Complainant’s competitors, is using the Domain Name for the purpose of disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Neither the email nor the hard copy material could be delivered to the Respondent. The courier company DHL reported that: “We cannot deliver the shipment as consignee moved and the provided phone number is wrong.” (The Panel notes that the Center has however discharged its obligations under the Rules as to notification). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a response as the Panel considers applicable (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”
The Complainant submits that the Domain Name is identical to the Complainant's well known registered trade mark FXPRO. The Domain Name incorporates the Complainant's trade mark in its entirety with the only addition being “.co” which is the Colombian Domain Name suffix.
It has been consistently held in numerous UDRP decisions that domain names are identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademarks, in which the Complainant has rights and the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name as the Respondent is not generally known by the Domain Name, nor has it acquired any trade mark or service mark rights in the FXPRO mark. The Complainant has not authorised, licensed or otherwise consented to the Respondent's use of its trade mark FXPRO by incorporation into the Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant advises that the Domain Name resolves to a website containing sponsored links to direct competitors of the Complainant, thereby unlawfully diverting Internet visitors seeking the Complainant’s FXPRO website.
The Respondent’s use of the Domain Name for such purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, see Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946, where the panel stated that: “The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling: (See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd. CaseWIPO Case No. D2004-0088)”.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Sampo plc v. Tom Staver,WIPO Case No. D2006-1135; Audi AG v. Dr. Alireza Fahimipour,WIPO Case No. DIR2006-0003).
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Domain Name resolves to a website containing sponsored links to direct competitors of the Complainant. The Complainant advises that it operates in a highly regulated environment and the use by the Respondent of the Complainant's trade mark will harm the goodwill and reputation of the Complainant in the use of the registered trade mark FXPRO and will result in lost sales for the Complainant.
Some of the links listed on the Respondent’s website are to foreign exchange (“forex”) services:
• Forex Trade Software
• Forex Trading Software
• Forex Trading News
• A Forex Trading Account
• Best Forex Trading Signals
• Forex Signals Pips
• Learn Forex Trade
• Forex Brokers Online
• Forex Spreads
• Open Forex Account
The deliberate and misleading use of another person’s trademark for the purpose of diverting Internet traffic to their own web site is evidence of bad faith. As was held by the panel in Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248, “it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.”
The Panel finds that the use of the Domain Name by the Respondent in this way, is a deliberate attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade mark FXPRO. Internet users are likely to falsely believe that the site to which the Domain Name resolves is sponsored, endorsed or authorised by the Complainant. This is heightened by the content that is available on the Respondent's website which consists of sponsored links of other providers of online foreign exchange services, including direct competitors of the Complainant.
The Respondent’s use of the website to which the Domain Name resolves, to provide links advertising the Complainant’s commercial competitors, constitutes an attempt to disrupt the Complainant’s business. See Ticketmaster Corporation v. Woofer Smith,WIPO Case No. D2003-0346, where the respondent was found to be deliberately seeking to disrupt the complainant’s business, by directing consumers to a competitor’s website.
As the Complainant points out, the Respondent is resident in Argentina, but has registered the Complainant's name within the Colombian Domain Name suffix. Despite this, the website attached to the Domain Name is clearly targeting English speaking visitors and the sponsored links on the website point to competitors of the Complainant located in Cyprus and more generally in Europe.
The Panel finds that the Respondent through its registration and use of the Domain Name is relying on the substantial reputation and goodwill that the Complainant has built up in the short period from its establishment through the substantial, extensive and expensive marketing and promotion of the FXPRO trade mark and is seeking to benefit financially from such deception. This also constitutes a bad faith use of the Domain Name under the Policy.
The Panel therefore finds that paragraphs 4(b)(iii) and 4(b)(iv) of the Policy are made out, and that the Complainant has satisfied the third requirement 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 be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: July 31, 2012
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