Complainant is FXCM Global Services, LLC, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom (“UK”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Das Kty, United States. 2. The Domain Name and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing the 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 September 21, 2020 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 September 21, 2020. 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 October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 3, 2020. 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 London-based company which operates as a retail broker in the foreign exchange (“Forex”) market. Founded in 1999, Complainant is a leading provider of online Forex trading, contract for differences (“CFD”) trading and related services. Complainant’s services aim to provide global traders with innovative trading tools and high-quality training educators. Such tools include mobile trading, one-click order execution and trading from real-time charts. Complainant also offers educational courses on Forex trading. Complainant is the owner of a number of registered trademarks, including: - FXCM, United States trademark registration number 2620953, registered on September 17, 2002; - FXCM, European Union trademark registration number 003955523, registered on November 3, 2005; - FXCM, Australian trademark number 1093998, registered on June 13, 2006. Complainant also operates and owns several websites, the predominant of which is “www.fxcm.com”, and specifically “www.fxcm.com/uk/” for its UK-centered operations. Complainant offers its services in multiple languages, including English, Chinese, German, French and Italian. Complainant also has a mobile app, available on popular app market places such as the Apple Store and Google Play. In addition to its main website, the Complainant has also registered domain names which feature the FXCM mark, including: - Complainant also has an established social media presence and uses the FXCM mark to promote its services under this name, in particular, on: - Facebook: www.facebook.com/FXCM Respondent registered the Domain Name on July 22, 2020. The record indicates that the Domain Name previously redirected Internet users to Complainant’s official site at “www.fxcm.com”. The record also indicates that since Complainant issued its cease and desist letter to Respondent on August 18, 2020 to which the Respondent did not respond, the Domain Name had ceased redirecting Internet traffic to Complainant’s official site, and had since resolved to a web page indicating “Account Suspended”. At the time of the Decision, the Domain Name resolves to a webpage which indicates that: the IP address has either changed, there has been a server misconfiguration or the site had been moved to a different server. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is 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 trademark registrations for the FXCM marks and owns several domain names incorporating the FXCM mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporates Complainant’s FXCM mark in its entirety, with an added term “‑uk” which includes a dash “-“ and a geographical term “uk”, to confuse Internet users looking for bona fide and well-known FXCM 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; (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. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the FXCM marks, which have been registered since at least as early as 2002, well before Respondent registered the Domain Name on July 22, 2020. Complainant has also submitted evidence which supports that FXCM is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark FXCM. With Complainant’s rights in the FXCM marks 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, “.co”), 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 FXCM trademark. This mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name. The voluntary addition of the geographical term “-uk” in relation to the FXCM mark in the Domain Name, Thus, 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, the 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 FXCM marks, 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 FXCM trademarks or to seek registration of any domain name incorporating the trademarks. 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 previously redirected Internet users to Complainant’s official site at “www.fxcm.com”. The record also indicates that since Complainant issued its cease and desist letter to Respondent, the Domain Name had ceased redirecting Internet traffic to Complainant’s official site, and had since resolved to a web page indicating “Account Suspended”. At the time of the Decision, the Domain Name resolves to a page that indicates that: the IP address has either changed, there has been a server misconfiguration or the site had been moved to a different server. 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 interest 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 FXCM marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide. Therefore, Respondent was likely aware of the FXCM marks 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 FXCM trademark in its entirety with an additional geographical term “-uk”, and Respondent’s redirection of the Domain Name to Complainant’s official site before receiving the cease and desist letter suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the FXCM mark, 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, where POKÉMON was held to be a well‑known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. As discussed above, the Domain Name redirected Internet users to Complainant’s official site at “www.fxcm.com”. The record also indicates that since Complainant issued its cease and desist letter to Respondent, the Domain Name had ceased redirecting Internet traffic to Complainant’s official site, and had since resolved to a web page indicating “Account Suspended”. At the time of the Decision, the Domain Name resolves to a page that indicates that: the IP address has either changed, there has been a server misconfiguration or the site had been moved to a different server. 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. The Panel further finds that the current non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding in this case (WIPO Overview 3.0, section 3.3). In addition to the circumstances referred to above, Respondent’s failure to file a response and the undelivered Written Notice to Respondent, Das Kty, due to false contact details are 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
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- Twitter: https://twitter.com/fxcm
- YouTube: www.youtube.com/fxcm
Sole Panelist
Date: November 17, 2020
Full & Egal Universal Law Academy