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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forex Capital Markets LLC v. lu zhao hui

Case No. D2016-0265

1. The Parties

The Complainant is Forex Capital Markets LLC of New York, New York, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is lu zhao hui of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <fxcm.online> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15 and 16, 2016, the Registrar 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 regarding the registrant information, the Complainant filed an amended Complaint on February 18, 2016.

On February 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 21, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceeding commenced on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2016.

The Center appointed Francine Tan as the sole panelist in this matter on March 24, 2016. 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 incorporated in the State of Delaware in 1999 and is the first foreign exchange (“forex”) broker to be listed on the New York Stock Exchange.

The Complainant states that it operates three main brands – FXCM, DAILYFX and DAILYFXPLUS. These all relate to trading online.

The Complainant’s FXCM trade mark is used in relation to its global provision of forex currency trading and related services to retail and institutional customers. It has offices located in the United Kingdom, Germany, Australia, France, Italy, Greece, China, and Japan, and affiliate offices in Canada, Israel, Chile and Lebanon. The Complainant has a worldwide employee count of 800.

The Complainant’s revenue in 2013 was USD 438.8 million. It has received many accolades including “2013 Trade Planet – Winner Best Forex Brokerage Service” and “2012 Investment Trends – Largest Forex Trader”.

The Complainant’s main website is operated from “www.fxcm.com”. The Complainant states that it has invested considerable time and resources into developing its online presence, including on social media platforms such as Facebook, YouTube and Twitter.

The disputed domain name was registered on August 26, 2015. At the time of the filing of the Complaint, it did not resolve to any active website.

A cease and desist letter was sent to the Respondent on October 22, 2015, in both Chinese and English, outlining the Complainant’s rights and requesting a transfer of the disputed domain name. A second notification was sent on November 12, 2015. No response was received from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

(i) The disputed domain name is identical to a trade 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 was registered and is being used in bad faith.

In relation to the first element of paragraph 4(a) of the Policy – The Complainant states it has substantial trade mark rights in FXCM. Its mark FXCM (and variations thereof incorporating FXCM) has been registered, inter alia, in the United States of America, the European Union, Singapore, and by way of International Registration Nos. 872083 and 1049102. These trademark registrations precede the registration of the disputed domain name. The disputed domain name extension “.online” has no relevant distinguishing function when drawing a comparison between the trade mark FXCM and the disputed domain name. The relevant part of the disputed domain name is identical to its FXCM trade mark.

In relation to the second element of paragraph 4(a) of the Policy – The Complainant states it has never had dealings or an affiliation with the Respondent. Neither has it licensed or permitted the Respondent to use the Complainant’s FXCM trade mark within a domain name, or for any other purpose. The Respondent does not appear to have any trademark registration for FXCM. Even if it did, such a trademark registration would have been obtained purely in an attempt to circumvent the Policy. Further, there is nothing to suggest that the Respondent is known as “Fxcm”.

In relation to the third element of paragraph 4(a) of the Policy – The Complainant states that at the date of registration of the disputed domain name, the Complainant had been already well established; it had been in operation in China for 12 years, with an office in Hong Kong, China. Its reputation in China is clear from online searches for “FXCM online”. The Respondent must have registered the disputed domain name with the intention to take advantage of the Complainant’s goodwill and reputation. It is improbable that the Respondent could have chosen a domain name which utilizes the Complainant’s FXCM trade mark with the generic Top-Level Domain (“gTLD”) “.online” by chance.

The Respondent’s email address appears to be associated with another domain name, <saxobank.help>, which corresponds to a Danish investment company, SAXO Bank. The Complainant further noted that after the cease and desist letters were sent, the email address and contact number of the Respondent were changed, as reflected in the WhoIs records. The Complainant asserts that this is in order to conceal the Respondent’s true identity and to attempt to circumvent being held accountable for its actions by the Complainant or by virtue of the Policy. The non-use of the disputed domain name is still within the Policy as many UDRP decisions have been issued which recognize that “the passive holding of a domain name with knowledge that the domain name infringes on another party’s trademark rights is evidence of bad faith registration and use”.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Complaint was filed in English although the Registration Agreement was in Chinese. The Complainant requested that English be the language of the proceeding for these reasons. The Respondent’s knowledge of the Danish business, SAXO Bank, as evidenced by its registration of <saxobank.help> indicates a working knowledge of the English language whereas the Complainant has no familiarity with the Chinese language. Requiring the Complainant to translate the Complaint from English to Chinese would not be in keeping with the overriding principles of paragraph 10(b) and (c) of the Rules.

Paragraph 11(a) of the Rules states that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Further, the Panel has noted that the Respondent has not objected to the Complainant’s request for English to be the language of the proceeding. Accordingly, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding. The Panel is persuaded that the Respondent must have a degree of familiarity with the English language, seeing its choice of domain names which contain the gTLDs “.online” and “.help”. It would unduly delay the proceeding if the Complainant were required to translate all the documents pertaining to this proceeding into Chinese. The Respondent has been contacted on a number of occasions, in both the English and Chinese languages, by the Center as well as by the Complainant, in relation to the issue of the disputed domain name. There has been no response whatsover from the Respondent. The Panel is of the view, in the circumstances, that the Respondent has been afforded a fair opportunity to be heard on the matter and would not be prejudiced by the Panel’s determination that English is to be the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has established it has rights in the mark FXCM. This trade mark has been incorporated in its entirety in the disputed domain name. The Panel accordingly finds that the disputed domain name is identical to the disputed domain name.

The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of circumstances which, if established by a respondent, can demonstrate its rights or legitimate interests in a domain name:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is 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 at issue.

The Respondent has not submitted any Response or evidence to show it has rights or legitimate interests in the disputed domain name. The Panel therefore has to solely consider, in relation to the issue of paragraph 4(a)(ii) of the Policy, whether the Complainant has established a prima facie case, that the Respondent does not have rights or legitimate interests in the disputed domain name.

In this case, the Complainant has not licensed nor authorized the use of the Complainant’s FXCM mark to the Respondent. The Respondent has not shown with evidence that it is commonly known by the name “Fxcm”.

The Panel is accordingly of the view that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Panel finds for the Complainant in regard to the second requirement of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Complainant’s mark has been used for a long period of time and extensively across the world before the disputed domain name was registered. The reputation in the name of the Complainant and its FXCM trade mark is strong and the FXCM mark and brand name are widely known. The fact that the disputed domain name was passively held does not negate a finding of bad faith registration and use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent has been silent in the proceeding and did not respond to the Complainant’s cease and desist letters. The fact that the Complainant offers online forex trading services under the FXCM mark is a circumstance which makes the Respondent’s choice in the combination of the letters “fcxm” with “.online” suspicious. The Respondent did not provide evidence of any actual or contemplated good faith use of the disputed domain name, nor did it show that it has rights or legitimate interests in the disputed domain name.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(a)(iii) of the Policy has been satisfied.

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 <fxcm.online> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: April 10, 2016

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