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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Brook Christopher

Case No. D2020-2411

1. The Parties

The Complainant is FXCM Global Services, LLC, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Brook Christopher, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <fxcm-cryptoworld.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 23, 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 the Respondent of the Complaint, and the proceedings commenced on September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.

The Center appointed James Bridgeman SC as the sole panelist in this matter on October 27, 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

The Complainant is a London-based company which operates as a retail broker in the foreign exchange (“Forex”) market and is the owner of the following trademark registrations:

- United States trademark FXCM, registration number 2,620, 953, registered on the Principal Register on September 17, 2002 for services in international class 36;
- European Union trademark FXCM, registration number 003955523, registered on November 3, 2005 for services in classes 35, 36 and 41;
- Australian trademark FXCM, registration number 1093998, registered on June 13, 2006 for services in classes 36 and 41.

The Complainant has an established Internet presence. Its main website is at “www.fxcm.com” on which it provides its services and the Complainant also owns a portfolio of domain names that incorporate its FXCM mark including: <fxcm.asia>, <fxcm.ba>, <fxcm.bi>, <fxcm.blog>, <fxcm.bo>, <fxcm.broker>, <fxcm.bs>, <fxcm.capital>, <fxcm.ceo>, <fxcm.co.dk>, <fxcm.co.uk>.

The disputed domain name was registered on January 3, 2020 and resolves to a website that purports to be hosted by an entity described as “FXCM CRYPTOWORLD” offering a “secure and easy way to invest in bitcoin”.

There is no information available about the Respondent except for that provided in the Complaint as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Center for confirmation of the registration details of the disputed domain name.

The Respondent has availed of a privacy service to conceal his identity on the published WhoIs and his name and details were disclosed by the Registrar in response to the Center’s verification request.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its rights in the FXCM service mark acquired by its ownership of the abovementioned trademark registrations.

Arguing that it has an established reputation and goodwill in the use of the mark in its financial services business, the Complainant asserts that it was founded in 1999 and has since grown to become a leading provider of Forex trading, primarily operating from its main website at “www.fxcm.com”.

In support of this submission, the Complainant refers to what primarily appear to be screenshots of its own websites describing third party accounts of its activities and refers to prior decisions in complaints under the Policy in which the panels have recognized the value of its FXCM mark. Citing for example FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111 (‘Complainant’s mark is distinctive and well-known in its industry’).

The Complainant alleges that the disputed domain name is confusingly similar to the FXCM mark in which the Complainant has rights, arguing that the disputed domain name incorporates the FXCM trademark in its entirety with the addition of descriptive terms “crypto” and “world”.

The Complainant submits that it is accepted that where the relevant mark is recognisable within the disputed domain name, the addition of other terms (whether descriptive, geographical, meaningless or otherwise) does not prevent a finding of bad faith under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant adds that numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity (see, for example, Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795).

The Complainant adds that rather than distinguishing the disputed domain name, the conjunction of the term “cryptoworld” with the “fxcm” trademark creates further confusion in the minds of Internet users, arguing that users familiar with the Complainant’s services will assume that the disputed domain name is affiliated with the Complainant’s services in relation to cryptocurrency.

The Complainant further submits that the generic Top-Level Domain (“gTLD”) extension “.com” should be disregarded in comparing the disputed domain name with the Complainant’s mark for the purposes of the first element of the test in Policy paragraph 4(a)(i) as it is viewed as a standard registration requirement. Citing WIPO Overview 3.0.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name arguing that the Respondent is not known, nor has he ever been known as “fxcm”; that to the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term “fxcm”; nor is there any evidence that the Respondent holds any unregistered rights to the term “fxcm”.

Moreover, the Complainant asserts that all active trademarks for the term “fxcm” are held by the Complainant and that the Respondent has not received any license from the Complainant to use a domain name which features its FXCM trademark. Prior Panels have held that in the absence of any license or permission from a complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name may reasonably be claimed.

The Complainant further argues that its FXCM trademark is distinctive and is not used in commerce other than by the Complainant. Therefore, there is no plausible reason for the registration and use of the disputed domain name <fxcm-cryptoworld.com> other than to take advantage of the goodwill and valuable reputation attached to the FXCM mark, as the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the mark in any way.

The Complainant adds that the Respondent cannot claim that before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name is in connection with a bona fide offering of goods or services. Referring to screenshots of the website to which the disputed domain name resolves, the Complainant submits that is used by the Respondent to host a website that offers services for Bitcoin investment, under the title “FXCMCRYPTOWORLD”.

The Complainant argues that the Respondent is using the disputed domain name in an attempt to give the impression of association with the Complainant’s business, and such representation does not confer a genuine good faith use. See, for example, Dareos Ltd. and Dareos Inc. v. Inna Feshchuk, Natalia Zelenina, Tatiana Deduch and Dmitry Shepilev, WIPO Case No. D2020-1232, where the Panel noted “such conduct, involving the representation that the Respondent’s Website is in some way connected to the Complainants does not, on its face, amount to use of the Domain Names for a bona fide offering of goods or services”.

Further, the Complainant submits, the Respondent’s use of the disputed domain name to redirect Internet users – intending for the services of the Complainant – to the Respondent’s own website, does not confer a genuine offering of goods or services. The Respondent’s use of the disputed domain name in this manner is competitive to the Complainant’s business as it is used to offer services similar to that offered by the Complainant (i.e. financial investments).

The Complainant submits that the evidence shows that the Respondent is not making a legitimate noncommercial use of the disputed domain name, but is attempting to generate a commercial gain by misleadingly diverting Internet users to a website that offers competing services to that of the Complainant (i.e. financial investments).

The Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name was aware of the Complainant and its mark and reputation when the disputed domain name was registered. The Complainant’s registered trademark rights and its reputation in the use of the FXCM mark were well established when the disputed domain name was registered. An Internet search against the term “fxcm” on the Google search engine lists the Complainant’s website as the first result.

The Complainant alleges that the disputed domain name is being used in bad faith arguing that the screenshot of the website to which the disputed domain name resolves illustrates that the disputed domain name was registered primarily for the purposes of disrupting the business of a competitor. The WIPO Overview 3.0 states that a competitor should be considered to include any “person who acts in opposition to another.” The Complainant further submits that it is not necessary to show that the Complainant’s business was actually disrupted but that it is sufficient for the evidence to show that the disputed domain name was registered with the primary purpose of disruption.

The Complainant further submits that the screenshots of the Respondent’s website exhibited in an annex to the Complaint shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on their website or location.

The Complainant submits that the Respondent is using the disputed domain name to capitalize on the goodwill and reputation of the Complainant’s FXCM mark and is attempting to profit in bad faith by using the mark to mislead unsuspecting Internet users. The Complainant argues that it is particularly egregious that the use to which the disputed domain name is being put as a website address of a website that encourages misled Internet users to register on the Respondent’s website and to input personal data such as email and postal addresses and telephone numbers.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(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.

A. Identical or Confusingly Similar

The Complainant has adduced clear and convincing evidence that it has rights in the FXCM service mark acquired by its ownership of the abovementioned trademark registrations and its use of the mark in its online foreign exchange trading business including on its main website at “www.fxcm.com”.

The disputed domain name <fxcm-cryptoworld.com> consists of the Complainant’s FXCM mark, a hyphen, the word “cryptoworld” and the gTLD “.com” extension.

The Complainant’s distinctive FXCM mark is the initial and dominant element in the disputed domain name.

The term “cryptoworld” does not prevent a finding of confusing similarity with the Complainant’s mark.

The hyphen does not prevent a finding of confusing similarity either, and in fact serves to affirm the confusing similarity by separating and emphasizing the Complainant’s trademark within the disputed domain name and thereby drawing attention to the first element of the disputed domain name consisting on the Complainant’s FXCM mark.

In the circumstances of this Complaint, the gTLD “.com” extension may be disregarded for the purposes of comparison because of it being a technical necessity for registration of a domain name.

This Panel finds therefore that the disputed domain name is confusingly similar to the FXCM mark in which the Complainant has rights. The Complainant therefore succeeds in the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name arguing

- that the Respondent is not known, nor has he ever been known as “FXCM”;
- that to the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term “fxcm”;
- that there is no evidence that the Respondent holds any unregistered rights to the term “fxcm”;
- that all active trademarks for the term “fxcm” are held by the Complainant who has not granted the Respondent any license to use a domain name which features its FXCM trademark;
- that the Respondent is not in any way affiliated with the Complainant;
- that its FXCM trademark is distinctive and not used in commerce other than by the Complainant and therefore there is no plausible reason for the registration and use of <fxcm-cryptoworld.com> other than to take advantage of the goodwill and valuable reputation attached to the Complainant’s brand;
- that the Respondent cannot claim that before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name is in connection with a bona fide offering of goods or services because the screenshots of the website to which the disputed domain name resolves, the Complainant submits that is used by the Respondent to host a website that offers services for Bitcoin investment, under the title “FXCMCRYPTOWORLD” in competition with the Complainant;
- that the said screenshots show that the Respondent is using the disputed domain name in an attempt to give the impression of association with the Complainant’s business, and such representation does not confer a genuine good faith use;
- that the Respondent’s use of the disputed domain name to redirect Internet users – intending for the services of the Complainant – to the Respondent’s own website, does not confer a genuine offering of goods or services; and
- that the Respondent is not making a legitimate noncommercial use of the disputed domain name, but is attempting to generate a commercial gain through misleadingly diverting Internet users to a website that offers competing services to that of the Complainant (i.e. financial investments); and
- that the Respondent is directly or indirectly generating commercial gain through the use of the disputed domain name that takes advantage of the Complainant’s reputation and goodwill.

In such circumstances the burden of production shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. No Response was submitted and therefore the Respondent has failed to discharge the burden.

This Panel must therefore find that the Respondent has no rights or legitimate interests in the disputed domain name and Complainant succeeds in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence on record shows that it is implausible that the registrant of the disputed domain name was unaware of the Complainant and its mark and reputation when the disputed domain name was registered.

The Complainant’s registered trademark rights date back to September 17, 2002 and long predate the registration of the disputed domain name on January 3, 2020. Furthermore, the uncontested evidence adduced by the Complainant shows that it has been operating its services since 2009 and has developed a significant goodwill and reputation.

The use of the disputed domain name as the address of a website that purports to offer services which are identical to those offered by the Complainant allows this Panel to find that on the balance of probabilities the disputed domain name was chosen and registered in bad faith to take predatory advantage of the Complainant’s name, mark, goodwill and reputation.

The screenshots adduced in evidence show that the Respondent is using the disputed domain name as the address of a website that purports to be hosted by an entity described as “FXCM CRYPTOWORLD” offering a “secure and easy way to invest in bitcoin”, and encouraging Internet users to register by providing their personal data.

Of particular concern is that there is no evidence that the website to which the disputed domain name resolves is providing any service whatsoever but is encouraging misled Internet users to register on the Respondent’s website by inputting their personal data such as email and postal addresses and telephone numbers.

This Panel finds therefore that on the balance of probabilities that the uncontested evidence proves that the Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website and the services that the Respondent purports to be offering on his website.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and that the Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) 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 disputed domain name <fxcm-cryptoworld.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: November 4, 2020

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