WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. 张一凡 (zhang yi fan), 保定柄那科技有限公司 (bao ding bing na ke ji you xian gong si)

Case No. D2021-1062

1. The Parties

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

Respondent is 张一凡 (zhang yi fan), 保定柄那科技有限公司 (bao ding bing na ke ji you xian gong si), China.

2. The Domain Names and Registrars

The disputed domain names <fxcm.fit>, <fxcm.host> and <fxcm5g.vip> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn). The disputed domain name <fxcm5g.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (collectively referred to as the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 13, 2021, the Registrars each transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 14, 2021 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 in English on April 16, 2021.

On April 14, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 16, 2021, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 17, 2021.

The Center appointed Yijun Tian as the sole panelist in this matter on May 25, 2021. 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

A. Complainant

Complainant, FXCM Global Services, LLC, is a company incorporated in the U.S.. It 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 difference (CFD) trading and related services. It has numerous international offices, such as those located in the UK, Australia, France, Hong Kong, China, and South Africa, amongst others (Annex 5 to the Complaint).

Complainant has exclusive rights in FXCM, and FXCM related marks (hereinafter “FXCM marks”). Complainant is the owner of numerous FXCM marks worldwide, including a U.S. trademark registration for FXCM registered on September 17, 2002 (the U.S. trademark registration number 2620953); an Australian trademark registration for FXCM registered on Decemeber 3, 2004 (the Australian trademark registration number 1093998); and a European Union trademark registration for FXCM registered on November 3, 2005 (the European Union trademark registration number 003955523).

B. Respondent

Respondent is zhang yi fan (张一凡), bao ding bing na ke ji you xian gong si (保定柄那科技有限公司), China. The disputed domain names <fxcm.fit>, <fxcm.host> and <fxcm5g.vip> were registered on January 11, 2021, respectively, and the disputed domain name <fxcm5g.com> was registered on January 10, 2021, long after the FXCM marks were registered. The disputed domain name <fxcm5g.com> used to resolve to a website which at different times brandished confusingly similar variations of Complainant’s distinctive FXCM logo, and appeared to offer a login portal facility, encouraging Internet users to input personal information while the disputed domain names <fxcm.fit>, <fxcm.host> and <fxcm5g.vip> resolved to inactive websites (Annex 13 to the Complaint). All of the disputed domain names currently resolve to inactive websites.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names <fxcm.fit>, <fxcm.host>, <fxcm5g.vip> and <fxcm5g.com> are confusingly similar to the FXCM trademark, and the Panel should disregard the generic Top-Level Domain (gTLD) “.com”, “.vip”, “.fit” and “.host” extensions, as these reflect a standard registration requirement.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names.

Complainant contends that Respondent has registered and used the disputed domain names in bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

a) at least one of the disputed domain names (<fxcm5g.com>) has been used to host a website featuring text in English, e.g., “A GLOBAL LEADER IN ONLINE TRADING” (see Annex 13 to the Complaint);

b) Respondent has not responded to any of Complainant’s cease and desist messages i.e. to convey that it does not understand English/would like to receive correspondence in another language;

c) neither Complainant nor its representatives are familiar with the Chinese language. Complainant is based in the U.S. and requiring a translation would result in it incurring additional expense and unnecessary delay; and

d) the disputed domain names comprise Latin letters, rather than Chinese characters.

Respondent, zhang yi fan (张一凡), bao ding bing na ke ji you xian gong si (保定柄那科技有限公司), did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of Complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering Complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain names, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the U.S., and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names <fxcm.fit>, <fxcm.host>, <fxcm5g.vip>, and <fxcm5g.com> all include Latin characters (“fxcm”), and the disputed domain names <fxcm5g.vip>, and <fxcm5g.com> contain the suffix (“5g”). The disputed domain names are registered with the gTLD comprising of the Latin characters “.com”, and English words “.fit”, “.host”, and “.vip” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent, zhang yI fan (张一凡), appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain names include Latin characters, number, and English words, rather than Chinese scripts; (b) the gTLD of the disputed domain names are “.com”, or English words “.fit”, “.host”, and “.vip”. So the disputed domain names seem to be prepared for users worldwide, including English speaking countries; (c) the website resolved by the disputed domain name <fxcm5g.com> was a website in English which at different times brandished confusingly similar variations of Complainant’s distinctive FXCM logo; d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a response in either English or Chinese but none was filed.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the FXCM marks. The disputed domain names <fxcm.fit>, <fxcm.host>, <fxcm5g.vip>, and <fxcm5g.com> comprise the FXCM mark in its entirety. The disputed domain names <fxcm.fit>, and <fxcm.host> only differ from Complainant’s trademarks by the gTLD suffix “.fit” or “.host” to the FXCM marks, respectively. The disputed domain names <fxcm5g.vip>, and <fxcm5g.com> only differ from Complainant’s trademarks by the suffix “5g”, and the gTLD suffix “.vip” or “.com” to the FXCM marks, respectively. None of these compromise the recognizability of Complainant’s marks within the disputed domain names, nor eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain names (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11.1.)

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to respondent of the dispute, the use by respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) respondent has been commonly known by the disputed domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

The FXCM marks have been registered internationally, including a U.S. trademark registration for FXCM registered since 2002; and a European Union trademark registration for FXCM registered since 2005, which long precede Respondent’s registration of the disputed domain names (all in 2021). According to Complainant, founded in 1999, Complainant is a leading provider of online Forex trading, CFD trading and related services. It has numerous international offices, such as those located in the UK, Australia, France, Hong Kong, China, and South Africa.

Moreover, Respondent is not an authorized dealer of FXCM branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:

(a) there has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “fxcm” in the disputed domain names and in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the FXCM marks or to apply for or use any domain names incorporating the FXCM marks.

(b) there has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2021, long after the FXCM marks became internationally known. The disputed domain names are confusingly similar to the FXCM marks.

(c) there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, as mentioned above, the disputed domain name <fxcm5g.com> used to resolve to a website which at different times brandished confusingly similar variations of Complainant’s distinctive FXCM logo, and appeared to offer a login portal facility, encouraging Internet users to input personal information while the disputed domain names <fxcm.fit>, <fxcm.host> and <fxcm5g.vip> resolved to inactive websites. It seems that Respondent made profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017‑2203.)

The Panel notes that Respondent has not produced any evidence to establish its rights or legitimate interests in the disputed domain names.

Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.

(a) Registration in Bad Faith

The Panel finds that Complainant has established that its FXCM marks have widespread reputation as a leading provider of online Forex trading, CFD trading and related services. It has numerous offices worldwide, such as those located in the UK, Australia, Hong Kong, China, and South Africa. As mentioned above, the FXCM marks are registered internationally, including a U.S. trademark registration for FXCM registered since 2002; and a European Union trademark registration for FXCM registered since 2005. It is not conceivable that Respondent would not have had actual notice of the FXCM marks at the time of the registration of the disputed domain names (in 2021). The Panel therefore finds that the FXCM mark is not one that Respondent could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain names were registered in bad faith.

(b) Use in Bad Faith

Regarding <fxcm.fit>, <fxcm.host> and <fxcm5g.vip>, as mentioned above, these three disputed domain names are inactive. In terms of inactive domain names, section 3.3 of the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” It further states: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

As discussed above, Complainant’s FXCM marks are widely known particularly in the online Forex trading market. Taking into account all the circumstances of this case, the Panel concludes that the inactive use of the disputed domain names <fxcm.fit>, <fxcm.host> and <fxcm5g.vip> by Respondent is in bad faith.

Regarding <fxcm5g.com>, as mentioned above, Respondent used the disputed domain name <fxcm5g.com> to resolve to a website which at different times brandished confusingly similar variations of Complainant’s distinctive FXCM logo, and appeared to offer a login portal facility, encouraging Internet users to input personal information. (Annex 13 to the Complaint). Thus, the Panel concludes that Respondent used the confusingly similar disputed domain name <fxcm5g.com> with the intention to attract, for commercial gain, Internet users to Respondent’s websites. The Panel therefore concludes that the disputed domain name <fxcm5g.com> was also registered and used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant. The fact that it currently resolves to an inactive website does not affect the finding of bad faith use for the reasons given above.

Given the reputation of the FXCM marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve. In other words, Respondent has through the use of confusingly similar disputed domain names created a likelihood of confusion with the FXCM marks. Moreover, as mentioned above, Respondent invited Internet users to the websites to which the disputed domain names resolved, presumably for commercial gain.

In summary, in the absence of evidence to the contrary from Respondent, the choice of the disputed domain names that are identical or confusingly similar to Complainant’s well-known trademarks and the use and non-use of the disputed domain names are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <fxcm.fit>, <fxcm.host>, <fxcm5g.vip> and <fxcm5g.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: June 16, 2021