World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FxPro Financial Services Limited v. Private Person, Ilya S Shilov

Case No. D2012-0223

1. The Parties

The Complainant is FxPro Financial Services Limited, Cyprus, represented by Brown Rudnick LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Private Person, Ilya S Shilov, Lesnogo, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <fxprobank.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 9, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 13, 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 disputed domain name was registered January 14, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant was founded in Cyprus in 2008 and has grown to be a leading international online foreign exchange and financial services provider with operations in eleven countries. Since its launch the Complainant has spent vast amounts of money promoting its name, brand and trademarks, for example through sponsorships of several major sport events. Hundreds of millions of people world wide have seen the events that the Complainant has sponsored. Also, the Complainant owns numerous trademark registrations for the FXPRO trademark for financial services via the Internet in the European Union, Austria, Bulgaria, China, Czech Republic, Denmark, Spain, France, Greece, Hungary, Italy, Poland, Portugal, Romania, Russian Federation and Ukraine. The Complainant owns the domain name <fxpro.com> from which it operates its business. In 2011 the web site linked to the domain name received over eight million visits from Internet users all over the world. Due to the extensive use of the FXPRO trademark, the promotion and the advertising of the Complainant’s business by reference to the trademark the Complainant is the proprietor of substantial goodwill and reputation in the field of financial services offered and delivered in particular by means of the Internet in relation to the FXPRO trademark.

The disputed domain name is confusingly similar to the Complainant’s registered FXPRO trademark phonetically, visually and conceptually. The added term “bank” is highly descriptive in respect of financial business and is closely related to the financial services offered by the Complainant, which further increases the confusion with the Complainant’s trademark. The disputed domain name is likely to lead the public falsely to believe that the web site linked to the disputed domain name is sponsored by, affiliated to or associated with the Complainant. The content of the webpage linked to the disputed domain name further increases the confusion since the Respondent uses the Complainant’s highly distinctive logo together with a large number of images from the Complainant’s website and logos of the third parties whom the Complainant sponsors. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized, licensed or otherwise consented to any use by the Respondent of the Complainant’s trademark or other content of its website.

The disputed domain name was registered and is being used in bad faith. The Complainant has not in any way consented to its registration. Since the Complainant has been operating in Russian Federation since 2008 the Respondent was aware of the Complainant’s trademark FXPRO prior to the registration of the disputed domain name. The purpose of the registration of the disputed domain name and the use thereof is primarily to disrupt the business of the Complainant. The Complainant operates in at highly regulated environment and the Respondent’s use of the Complainant’s trademark will harm the goodwill and the reputation of the Complainant. The loss of goodwill and reputation will be followed by lost sales. The registration of the disputed domain name and its use by the Respondent is a deliberate attempt by the Respondent to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark FXPRO so that the public is likely to falsely believe that the website linked to the disputed domain name is sponsored, endorsed or otherwise authorized by or in association with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has relied on the registrations of the FXPRO trademarks referred to in a schedule submitted together with examples of the Complainant’s marketing and sponsorship materials. In order to find out whether or not the Complainant holds rights to the trademarks referred to in the schedule submitted the Panel has deemed it necessary to visit the web site of the Office for Harmonization in the Internal Market (OHIM). The Panel finds this undertaking to be in accordance with the consensus view regarding the Panel’s possibilities to perform a limited factual research into matters of public record. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5). Through the online trademark database of the OHIM web site the Panel has found that the Complainant is the owner of the Community trademark FXPRO No. 006460349, registered November 22, 2007, and International trademark FXPRO No. 1048297 registered April 26, 2010, both registered in international class 36. Therefore, the Panel finds that the Complainant holds rights to the FXPRO trademark.

In accordance with the consensus view, the Panel does not regard the top-level suffix “.com” when deciding if the disputed domain name is identical or confusingly similar to the Complainant’s trademark. In accordance with this, the disputed domain name and the registered trademark FXPRO only differ by the generic, and of Complainant’s business closely related, word “bank”. The Panel finds that the registered FXPRO trademark constitutes the most distinctive element of the disputed domain name and that the addition of the word “bank” to the trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy (See Lime Wire LLC v. David Da Silva/Contractprivacy.com, WIPO Case No. D2007-1168; see also SAP AG v. Hugo Hector Ferreyra, WIPO Case No. D2011-0073).

In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered FXPRO trademark in the meaning of the paragraph 4(a)(i) and the first element of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to prove its rights or legitimate interests.

The Complainant has stated that there are no business relations between the Complainant and the Respondent that would give the Respondent any rights to use the FXPRO trademark in the disputed domain name. The Complainant has submitted printouts from the web site linked to the disputed domain name as well as printouts from the Complainant’s profile page at <youtube.com>. The printouts submitted prove that on the website linked to the disputed domain name the Respondent is presenting content similar to the Complainant’s profile page at <youtube.com>, as well as the Complainant’s trademark. The Panel finds this to be an indication that the Respondent’s use of the disputed domain name is not a bona fide offering of goods or services.

The Panel finds, based on the evidence provided on the record, that the Respondent is not commonly known by the disputed domain name. Further, there are no indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The UDRP Policy 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds the fact that the registration of the disputed domain name was made after the Complainant’s trademark registrations of the FXPRO trademarks as an indication of bad faith. Further, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name’s word combination “fxprobank” without having prior knowledge of the Complainant’s rights and business. By the printouts from the website linked to the disputed domain name it is proven that the Respondent is using the disputed domain name to present content similar to the content of the Complainant’s profile page on <youtube.com> as well as the Complainant’s trademark. The fact that the Respondent is using a name including the Complainant’s trademark with a generic word closely related to the Complainant’s business, together with the Respondent’s use of material similar to the Complainant’s promotion material and its trademark, is sufficient to indicate both registration and use in bad faith. It is the Panel’s firm view that the Respondent has registered the disputed domain name in awareness of the Complainant with the clear aim of taking advantage of the confusion between the disputed domain name and the Complainant rights. Therefore, the Panel finds that the Respondent’s registration and use of the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of its website.

The third element of the paragraph 4(a) of the Policy is thus fulfilled.

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 disputed domain name, <fxprobank.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Dated: March 21, 2012

 

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