WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Peregrine Financial Group, Inc. d/b/a PFG v. Andrey A. Barchenkov
Case No. D2007-1384
1. The Parties
The Complainant is Peregrine Financial Group, Inc. d/b/a PFG, Chicago, United States of America, represented internally.
The Respondent is Andrey A. Barchenkov, Moscow, Russian Federation, represented by Domain Statute, United States of America.
2. The Domain Names and Registrars
The disputed domain names <pfg-best.com> and <pfgfx.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2007. On September 24, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On September 25, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 2007. 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”), 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 October 2, 2007. In accordance with the Rules, paragraph 5(a), the (extended) due date for the Response was October 27, 2007. The Response was filed with the Center October 27, 2007.
The Center appointed The Honourable Sir Ian Barker, Carol Anne Been and David E. Sorkin as panelists in this matter on November 23, 2007. The Panel finds that it was properly constituted. Each member of 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.
On December 5, 2007, the Panel issued the following procedural order:
“The Panel requests further information from the Respondents concerning the operation of the business of Pro Finance Group. In particular, location and extent of offices, numbers of employees dedicated solely to the service of Pro Finance Group, range of services provided, countries where it operates as Pro Finance Group, annual turnover, regulatory permits granted to enable it to operate lawfully under the name of Pro Finance Group in named jurisdictions.
This information, which can be in summary form, is to be provided to the Center within three working days from the date of this request.
The Complainant may make submissions strictly in reply within a further three working days.
The date of decision in this case is extended to December 19, 2007.”
Both parties made submissions in response to the Panel’s Procedural Order. The Panel has duly considered these submissions.
4. Preliminary Issues
(a) Location of Registrar
In its Response to the Procedural Order, the Respondent claimed that the Complaint was administratively deficient in that, contrary to paragraph 3(b)(xiii) of the Rules, it submitted to the jurisdiction of the courts in San Francisco which is not a “mutual jurisdiction’ as defined in paragraph 1. San Francisco is not the location of the “principal office” of either the concerned registrar (Fuizan, China) or the disputed domain holder (Moscow, Russia).
Paragraph 1 defines “Mutual jurisdiction” as follows:
“Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.”
The Complainant, in reply, stated that the concerned registrar is Online NIC which has its principal office in California. The Center has been advised by Online NIC Inc. that, although it is a California incorporated company, it considers that its principal office is in Xiamen City, Fuijan Province, China.
The Complainant might have been pardoned in the circumstances for assuming that the principal office of a Californian corporation would be in California. The Complainant has submitted to the mutual jurisdiction at the location of the “Principal Office” of the Registrar. The Registrar specified this at the address referred to in the Service Terms.
The Service Terms of the Registrar provide that notices be delivered to an address in San Francisco. The registrant (i.e. the Respondent) under the terms must submit to the law of California. Any action concerning the Service Terms is to be brought in the Courts of Cameda County, Oakland, California.
The Respondent’s objection appears highly technical. In any case, considering the outcome in this matter, the issue need not be further addressed by the Panel.
(b) Correct Respondent
Centre, Centre RU, which has been named by the Complainant as a respondent, is affiliated with the Respondent Barchenkov. It hosts the websites of the disputed domain names. Because the website at “www.pfg-best.com” directs internet users to the web-page of the Respondent, Pro Finance Group, Inc., that company has been included as a Respondent by the Complainant.
In the view of the Panel, it was not necessary for the Complainant to have listed three respondents. No explanation for this unusual course was proffered.
The proper Respondent is Mr. Barchenkov, since he is registrant of both the disputed domain names. Sometimes one additional respondent needs to be cited in proceedings under the Policy but only in unusual circumstances, such as where there is a proxy registrant and a beneficial registrant. The Panel will hereafter refer to Mr. Barchenkov as the Respondent.
5. Factual Background
The Complainant is a corporation organised under the laws of the State of Iowa, which is authorised to do business in the State of Illinois, and it has its principal place of business in Chicago.
The disputed domain name <pfgfx.com> was registered on August 2, 2005 by the Respondent, Andrey A. Barchenkov. He registered the disputed domain name <pfg-best.com> on January 25, 2006.
The Complainant is a futures commission merchant which manages accounts for personal investors and traders involved with commodities, financial futures and options, foreign exchange (forex) products, and alternative investments. On the Complainant’s website at <pfgbest.com>, internet users can navigate for information as to the Complainant’s forex broker division, which directs potential customers to the web address “www.pfgforex.com”.
The Complainant has filed an application for a trademark in the United States of America Patent & Trademark Office under No. 77240265 on July 27, 2007 for the words “PFG (polygon) BEST.com”.
The Complainant has registered service marks for the expression “PFG” issued by the United States of America Patent & Trademark Office covering brokerage and dealer services in the field of securities and commodities, computer services, non-downloadable software for online trading. These were registered in 2002. There is no reference in the registered service marks to the provision of foreign exchange dealing. The Complainant is registered with the National Futures Association, the regulatory body for the futures industry in the United States of America.
The Respondent has produced evidence of numerous trademarks granted in the United States of America for the letters “PFG” alone, as abbreviations for a wide variety of services provided by firms in the finance and other sectors, with names, for example, as diverse as Penncorp Financial Group, Paine Financial Group Inc., Prime Financial Group, Preferred Financial Group, and Pontes Financial Group.
The Respondent was a party to proceedings under the Policy in WIPO Case No. D2007-0087. He filed no defence and the Complaint was allowed. The Pro Finance Group, according to the Respondent’s submissions filed in response to the Procedural Order, has headquarters in Moscow and an office in London, United Kingdom of Great Britain and Northern Ireland. It has customers for its trading, consulting and foreign exchange services in several countries. Exhibited to this filing were what were said to be permits from the Russian regulator. No translations were offered so the Panel is unable fully to assess these documents. The Respondent did not expand, as requested, about the extent of its offices. The Russian certificates appear to be dated October 24, 2006. There is no information as to when the Respondent planned to use the term “PFG” on a website.
The disputed domain name <pfg-best.com> resolves to a site for Principal Financial Group advertising retirement solutions and health insurance.
6. Parties’ Contentions
Although it does not specifically refer in its Complaint to the test of “confusingly similar” mentioned in paragraph 4(a)(i) of the Policy, one can infer that the Complainant alleges that the disputed domain names are confusingly similar to marks in which the Complainant has interests.
The Complainant relies on the fact that it has a website at “www.pfgbest.com” which directs potential customers to its web-page. It has only recently applied for a trademark in respect of <pfgbest.com> with a polygon symbol between “pfg” and “best”.
The Complainant did not give any rights to the Respondent to use the disputed domain names. The Complainant claims to be a world-renowned commodity and forex broker and that the Respondent, Barchenkov, was formerly affiliated with the Complainant as one of its foreign introducing brokers. He is, therefore, familiar with the Complainant’s marketing and development plans and its consumer base.
The Respondent is attracting customers of the Complainant to his own site by creating a likelihood of confusion with the Complainant’s mark for his own commercial gain. Moreover, the Respondent has embarked on a course of conduct using the names of other entities. A list was given of names of other foreign exchange dealers where domains were registered by the Respondent using names similar to those of competitors.
In its submissions following the Procedural Order, the Complainant said that the Respondent’s website listed an address in Illinois which was false. Industry regulators found that Pro Finance Group had no place of business there. No evidence in support of this contention (such as a letter from the regulator) was provided.
The Respondent asserts out that the Complainant does not positively state that the domain names in dispute were either identical or confusingly similar. The Complaint fails to assert, let alone establish, trademark rights in the term <pfgforex.com> to which it alleges the domain name is similar and does not allege similarity of that domain to any other mark.
As to the disputed domain name <pfg-best.com>, the Response refers to the Complainant’s trademark application for the expressions “PFG” and “BEST” with a polygon in between. The trademark rights of the Complainant have not been proved since the Respondent registered the disputed domain name in January 2006 and the trademark application was not filed until July 2007.
The Respondent refers to the following further matters:
(a) the term “pfg” is an abbreviation for a foreign currency, i.e. Pfenning (a coin of small value under the pre-Euro German currency);
(b) The initials “PFG” refer to a number of other corporations some with trademark registrations, such as Principal Financial Group, Preferred Financial Group and Portable Form Generator. The letters “FG” frequently stand for Financial Group. One of the Complainant’s trademark registrations specifically disclaims the word “Financial Group”. “PFG” is the subject of many registrations by multiple parties.
The Complainant cannot be distinguished by its forex operations because the Respondent’s forex operations pre-date the Complainant’s rights or interests. No proof was given as to when the Complainant commenced forex operations.
The Respondent agrees that Pro Finance Group is properly named as the Respondent and that, therefore, it may raise defences because of its joinder. PFG is a common abbreviation for the Respondent, Pro Finance Group, which is active in foreign exchange. Its offering of services on the website is bona fide, its logo is clearly displayed and distinguishable from any logo of the Complainant.
The Respondent contests the allegation that he was formerly affiliated with the Complainant as one of its foreign introducing brokers. His contract was not exhibited. He defaulted in the 2007 WIPO UDRP proceedings because he says he was not served with the papers. A contractual dispute between parties is outside the scope of the UDRP. The list of domain names held by the Respondent similar to those of other forex companies is a “red-herring”.
The contract between the parties provided that failure by the Complainant to pay the Respondent for his services would entitle him to hold any monies or property owed as security for payment. He referred to the number of cases under the UDRP where it was not appropriate for a Panel to decide contract disputes between the parties in what was a summary process designed to eliminate cyber-squatting.
The Respondent points to a refusal by the United States of America Patent & Trademark Office to register PFG BEST DIRECT. The Complainant brings frivolous actions and disciplinary action was taken against it by the relevant regulator.
In his submissions following the Procedural Order, the Respondent said that Pro Finance Group has offices in Moscow and London. It has 30 employees dedicated to its business of information, trading and consulting in foreign exchange with customers worldwide.
The Respondent seeks a declaration of reverse domain name hijacking.
7. Discussion and Findings
The Complainant is required by paragraph 4(a) of the Policy to establish:
“(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 by the Respondent.”
A. Identical or Confusingly Similar
As noted above, the obligation is on the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. It is established that the trademark rights can be established after registration of the domain name but it is very difficult to prove bad faith when a domain name was issued some time before the registered trademark or service mark.
The Complainant, along with a number of other companies and businesses in the United States of America, has a registered service mark in respect of the letters PFG for financial services. It has applied for registration of the trademark PFG BEST only in July of this year. Although there is a polygon between “pfg” and “best” in the application, the Panel holds that the disputed domain name <pfg-best.com> is confusingly similar to the Complainant’s application for a registered mark. However, there is no guarantee that registration will be granted.
In respect of both disputed domain names, the Complainant is entitled to rely on its registered PFG service marks. The view of the Panel is that both disputed domain names are confusingly similar to the registered service marks for PFG. It matters not for the purposes of the Policy that other entities may have trademarks for the same three-letter combination.
The Policy in paragraph 4(a)(i) merely requires a Complainant to demonstrate rights in a trademark. This has been done. The addition of the word ‘best’ and the letters “fx” do not detract from the confusing similarity with Complainant’s trademark.
Accordingly, the Complaint has satisfied the first requirement of the Policy.
B. Rights or Legitimate Interest
The Complainant gave the Respondent no rights or interests in its marks, so it is for the Respondent to show that he comes within paragraph 4(c) of the Policy, 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.”
(See WIPO Overview of Panel Views on Selected UDRP Questions at 2.1.)
Dealing first with paragraph 4(c)(i), the Respondent has to show that before any notice of the dispute he had made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
No evidence was presented by the Respondent as to when Pro Finance Group commenced operations, the extent of his interest in it or when preparations were made to launch the business. Nor is there any evidence of when the Respondent ceased his association with the Complainant. As noted earlier, no copy of the contract between the parties was exhibited.
The Panel infers that because of his prior association with the Complainant, he knew of the Complainant’s registered marks before he discontinued his association with it. He alleges, without any supporting evidence, that his forex operations predate those of the Complainant.
The Respondent further alleges that he is owed money by the Complainant and that the contract between them entitled him to hold money or property as security for the alleged debt. However, he has done nothing to exclude the possibility that Pro Finance Group was created with that name primarily as a pretext to use PFG in domain names. This possibility is viable because the disputed domain name <pfg-best.com> resolves to a site for Principal Financial Group. No information is given about Principal Financial Group’s connection with the Respondent.
By asserting that he is entitled to hold the disputed domain names as security for moneys allegedly owed to him by the Complainant arising out of their contract, he indicates that he knows of the Complainant’s claims to be entitled to the disputed domain names and would have known about the claims some time. So then he cannot be said to have made demonstrable preparations to use the disputed domain names in a legitimate business before he knew of the Complainant’s claim to the names.
Given the unsatisfactory lack of evidence on critical points, the Panel is unable to hold that the Respondent comes within paragraph 4(c)(i).
As to paragraph 4(c)(ii), the evidence does disclose a business known by the letters PFG which appears to be operating at least in Russian Federation.
The evidence is far from satisfactory as to whether the Respondent’s business is known by this name. There is no evidence of what ownership, if any, the Respondent has in Pro Finance Group. He has not disclosed it. Just because the Complainant mistakenly made Pro Finance Group a Respondent, it does not mean that the real Respondent (the registrant of the disputed domain names) is entitled to avail himself of a defence that might have been available to Pro Finance Group had it been the registrant and, therefore, the proper respondent.
Both defences under paragraph 4(c)(i) and (ii) fail because the Respondent has failed to come forward with sufficient evidence to rebut the Complainant’s prima facie case.
Accordingly, the Complainant has established the second criterion under paragraph 4(a) of the Policy.
C. Bad Faith
The Respondent claims that he registered the disputed domain names as security for payments due to him under a contract with the Complainant. He cites cases under the Policy to show that the Panel should not rule on contractual disputes such as whether a Respondent can retain control of a domain name as security for payment for some debt. Prima facie, it appears that the Respondent created Pro Finance Group as a pretext to support his registration of the disputed domain names.
However, given the lack of information supplied as to the nature of the parties’ relationship and the manner and timing of the Respondent’s exiting the relationship, the Panel considers that bad faith registration has not been proved. The contract dispute between the parties is secondary, but its existence points to the Panel taking the same view as that taken in the following cases.
In Clinomics Biosciences, Inc. v. Simplicity Software Inc. WIPO Case No. D2001-0823, the respondent claimed a lien over the domain name as security for payment for developing a website. The case is not similar since there can be no workman’s common law lien available since the Respondent does not claim that he developed a website.
In Adaptive Molecular Technologies Inc. v. Priscilla Woodward & Anor & Charles R. Thorton, d/b/a Machines & More WIPO Case No. D2000-0006, there was a contractual dispute between the parties which the Panel felt unable to resolve.
In CMM, CLC v. Seckinger, NAF Case No. FA340359, the respondent agreed that the complainant was entitled to the domain name but wished to hold it as security. The Panel considered that contractual issues were best resolved elsewhere.
As was said by the Panel in Clinomics:
“The claims of the parties here turn on whether or not there is a genuine dispute over Respondent’s contractual or legal right to retain the domain name as security for payment. Neither party here has provided us with any written contract to show the terms on which Respondent was retained to provide services. Respondent states, however, that it was the intent of the parties in registering the domain name that Respondent would have the right to enforce its contractual rights through the exercise of a lien on the domain name. To decide this issue would require additional evidence and an evaluation of the commercial law of liens. Accordingly, I agree with the Panelist in Map Supply that such a dispute is outside the scope of proceedings under the Policy and is properly decided by traditional means.
Prior decisions have rejected complaints where the dispute is primarily contractual and therefore outside the scope of the policy. See Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton, WIPO Case No. D2000-0006 (February 28, 2000). That appears to be the appropriate course here, where the dispute turns on the resolution of legal matters outside the scope of the Policy. In declining to grant relief, I take no position on the merits of the fee or lien dispute that exists between the parties.”
There seems to be a contractual dispute here which the Panel is unable to decide in proceedings under the Policy. Had the Panel been favoured with more information, it might have been able to reach a decision on the bad faith issue. There are indications of bad faith, such as the redirecting of one of the websites to Principal Financial Group. However, overall, there is insufficient evidence on which the Panel can make an inference of bad faith registration.
In the circumstances, the Panel feels unable to reach a finding on bad faith and the Complaint must fail because paragraph 4(a)(iii) of the Policy has not been proved by the Complainant.
8. Reverse Domain Name Hijacking
As to reverse domain name hijacking, the Panel declines to make a declaration, following Clinomics (supra) where the Panel put the issue in a similar case succinctly:
“I also reject Respondent’s claim that this is a case of reverse domain name hijacking. Reverse domain name hijacking involves an attempt by a trademark owner to take a domain name from another party without having a colorable legal right to do so. Here, there is a legitimate dispute over the right to hold the domain name, and Complainant is entitled to pursue that claim in an appropriate forum.”
For all the foregoing reasons, the Complaint is denied, as is the claim for a declaration of reverse domain name hijacking.
Hon. Sir Ian Barker
Carol Anne Been
David E. Sorkin
Dated: December 20, 2007