WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saxo Bank A/S v. Domains by Proxy, Inc. / Forexmedia LTD
Case No. D2011-0018
1. The Parties
The Complainant is Saxo Bank A/S of Hellerup, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America (the “First Respondent”) and Forexmedia LTD of Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland (the “Second Respondent”).
2. The Domain Name and Registrar
The disputed domain name <saxo-banque.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2011, GoDaddy.com, Inc. 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 January 12, 2011, 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 January 13, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2011.
The Center appointed David Williams as the Sole Panelist in this matter on February 16, 2011. 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. The Complainant
The Complainant states that it is a Danish company whose operations include providing online trading and investment services. It has been in existence since 1992, and has been a licensed European bank since June 2001.
B. The Complainant’s domain name and websites
The Complainant owns the domain name <saxobanque.com>, which according to the WhoIs information for the name (provided as part of Annex 6 to the Amended Complaint) was created on December 7, 2007.
The Complainant offers its services from the website “www.saxobank.com” (a screenshot of which was provided to the Panel in Annex 5 to the Amended Complaint). It has a French subsidiary, Saxo Banque, which offers its services via the website “www.saxobanque.com” (a screenshot of which was provided to the Panel as Annex 6 to the Amended Complaint), which in turn resolves to the Complainant’s website “www.saxobank.com”.
C. The Complainant’s trademarks
The Complainant is the registered holder, in numerous jurisdictions, of the trademarks SAXOBANK.COM and SAXOBANK. The trademarks were registered on February 14, 2001 and July 20, 2001 respectively. Registration details of the Complainant’s trademarks were given in Annexes 3 and 4 of the Amended Complaint.
Both of these marks apply to the following services, as listed in the Nice Classification: bank activities; financial activities; insurance activities; and monetary, exchange activities.
D. The disputed domain name and the Respondents
The disputed domain name was created on September 9, 2008.
The Complainant states in the Complaint that it became aware that the disputed domain name was being used to “promote some of [its] competitors’ services”. On December 15, 2010, the Complainant’s representative sent an e-mail to the First Respondent suggesting that the First Respondent voluntarily transfer the disputed domain name to it, and threatening to commence administrative proceedings if this did not occur within a certain time. This was followed by a reminder on December 21, 2010, the day before the ultimatum expired (copies of both e-mails were provided to the Panel as Annex 8 to the Amended Complaint).
The First Respondent did not reply to either of these e-mails.
As outlined in the procedural history given above, the original Respondent in this administrative proceeding was the First Respondent, Domains by Proxy, Inc., of Arizona, United States. The First Respondent was identified as the registrant of the disputed domain name in a WhoIs search conducted by the Claimant on January 4, 2011 (the results of which were provided to the Panel in Annex 1 to the Amended Complaint).
The Amended Complaint of January 13, 2011 also identifies as a respondent the Second Respondent, Forexmedia LTD of Tortola, the British Virgin Island, United Kingdom. A WhoIs search conducted on January 14, 2011 (the results of which were provided to the Panel by the Center as part of the case file) identifies this Respondent as the registrant. A WhoIs search conducted by the Panel on February 17, 2011 (at “who.godaddy.com”) also identified “Forexmedia LTD” as the registrant of the disputed domain name.
Based on the pattern of correspondence between the Center and the registrar, GoDaddy.com, Inc., and the First Respondent’s well-established business as a provider of “private” domain name registration services (of which the Panel takes judicial notice), the Panel finds that, more likely than not, the First Respondent acted as the agent of the Second Respondent in registering the domain name in September 2008.
Paragraph 1 of the Rules defines “respondent” as follows: “…the holder of a domain-name registration against which a complaint is initiated” (emphasis added). Given the change in the registration of the disputed domain name, the First Respondent does not fall within this definition.
In addition, the Panel notes that notification of the Amended Complaint was sent by the Center to the Respondents on January 14, 2011. Under the heading “communications”, the notification lists both the First and Second Respondent as recipients. The notification was sent by e-mail to the e-mail addresses of the First Respondent (that is to say, to the privacy service “Domains by Proxy, Inc”, as provided in the WhoIs information for the disputed domain name when this listed the First Respondent as registrant) and the Second Respondent (that is to say, to the identified registrant Forexmedia LTD, as confirmed by the concerned registrar, as indicated in the WhoIs at the time the Complaint was notified, and as currently provided in the WhoIs information).
The Written Notice of dispute was sent by courier to the physical address of the Second Respondent (being the confirmed registrant Forexmedia LTD) in the British Virgin Islands (which courier was delivered to the Second Respondenton January 19, 2011). However, it was not sent to the physical address of the First Respondent (being the concerned Registrar’s privacy service, “Domains by Proxy, Inc.”1 The question is therefore whether the Center has discharged its responsibility to employ reasonably available means calculated to give actual notice to the First Respondent (the privacy service, Domains by Proxy, Inc.) of the dispute, vis-à-vis paragraph 2(a) of the Rules. In other words, has the First Respondent been given adequate opportunity to respond to the Complaint?
As has been noted by this Panelist in a previous WIPO UDRP decision (Compagnie Gervais Danone v Transure Enterprise Ltd / Privacy, WIPO Case No. D2009-1019), “privacy shields” and registrars or other organizations offering such services complicate the process of contacting the registrant of a domain name. The Complainant in its Amended *Complaint decided not to replace the First Respondent with the Second Respondent, but instead filed against both Respondents. The Center notified the Complaint by email both to the Registrar-confirmed registrant of record, Forexmedia LTD and to the Registrar’s privacy service Domains by Proxy, Inc. Written Notice was correctly sent to the physical address of the Registrar-confirmed registrant of record, Forexmedia, LTD. The question is: would it be reasonable in such circumstances to also require that Written Notice to be sent to the physical address of the Registrar’s privacy service, Domains By Proxy, Inc., after the Registrar had timely-confirmed by email to the Center that the registrant of record is Forexmedia LTD.
Having regard to the underlying purpose of the Written Notice provision, which is to provide an additional safety valve in the event that a domain name registrant’s confirmed email address may nevertheless prove defective, such a requirement would appear superfluous. The confirmed registrant of record, Forexmedia LTD, was sent a complete copy of the Complaint by email, as was the Registrar’s privacy service, as was the Registrar. Forexmedia LTD was sent Written Notice to its physical address. The Center was in established email communication with the Registrar prior to the commencement of proceedings, and there is no reasonable basis for assuming here that the Registrar’s privacy service was not on notice of the proceedings, did not have functional email communications, or was in other ways materially prejudiced by not also receiving Written Notice to a physical address.
Given the default of both Respondents, the Panel agrees with this approach, and draws the inference (according to paragraph 14(b) of the Rules) that the First Respondent does not object to the Panel’s jurisdiction.
It is hereby confirmed that both the First and Second Respondents are proper respondents to this administrative proceeding, and shall be bound by this decision. Hereafter, both will be referred to as “the Respondents”.
E. The website
The disputed domain name resolves to the website at “http:// preferredforex.com/?referer=SAXO-BANQUE.COM”. A screenshot of the top half of this website was provided in Annex 7 to the Amended Complaint.
The Panel visited the website on February 17, 2011, and it appeared to be the same as at the time the screenshot was taken, apart from a change in the order of its sections.
The website is in four main sections. The first and smallest of these, at the top, contains a heading “Best Forex Brokers”. The other three are larger, in boxes of equal size, and arranged vertically below the first. They each have a different logo on the top left of their box, containing the phrases “CKFX.com”, “eToro” and “Forex Yard”, respectively. To the right of each logo are sections of text that appear to describe different online “trading platforms” (or things to that effect); images that appear to show screen shots of such platforms; and a series of buttons containing what appear to be a variety of links to the trading platforms. The predominant colour of the website is a teal blue. At its top, there is a row of small links that lead to versions of the website in seven different languages (including French).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is quasi-identical to the name of its French subsidiary, Saxo Banque, and the latter’s domain name <saxobanque.com>. The Complainant furthermore contends that the word “saxo-banque” contained in the disputed domain name is confusingly similar to the Complainant’s name (Saxo Bank A/S) and its protected trademarks (SAXOBANK and SAXOBANK.COM). Specifically, the Complainant points out that the disputed domain name appears to be a deliberate misspelling of the Complainant’s French subsidiary’s company name and website, by way of the insertion of a hyphen.
It is submitted that these similarities are reinforced by its use in connection with the marketing of financial services in competition with the Complainant.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name, for the following reasons:
1. The Respondents are using a domain name that is confusingly similar to the Complainant’s subsidiary and its trademarks to market competitors’ services, and hence appears to be making illegitimate commercial use of the domain name with the intent to misleadingly divert consumers or tarnish the Complainant’s trademarks for commercial gain;
2. The Respondents have not been authorized by the Complainant to use the name “Saxo-Banque” or any confusingly similar trademark; and
3. The Complainant’s trademarks were registered before the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. It relies on the substantial use by the Complainant of the company name Saxo Banque, the Complainant’s trademarks, and the domain name <saxobanque.com> in connection with online trading, and contends that the Respondents must have been aware of the Complainant’s trademarks and website prior to the registration of the disputed domain name. In this connection, the Complainant also again submits that the Respondent’s are using the disputed domain name to attract consumers to its website for the purposes of commercial gain, by exploiting confusion between the disputed domain name and the Complainant’s various names and trademarks.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
What the Complainant must prove
Paragraph 4(a) of the Policy states:
You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present.
Complaints are to be decided on the basis of the statements and documents submitted in the proceedings, the Rules, and any rules and principles of law that the panel deems applicable (paragraph 15(a) of the Rules).
Finally, the Panel notes that paragraph 14(b) of the Rules provides that in the event of a default by a party, the Panel shall, save in exceptional circumstances, draw such inferences from the default as it considers appropriate.
The three requirements of paragraph 4(a) are dealt with in turn.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <saxo-banque.com> is confusingly similar to the Complainant’s trademarks SAXOBANK.COM and SAXOBANK.
The test to be adopted under this head was set out by a previous WIPO UDRP panel in Sanofi-Aventis, Aventis Pharma Deutschland GmbH v Web Advertising, Corp, WIPO Case No. D2006-1273:
“The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned.”
In this case, the services concerned are online trading and investment services, and the Panel finds that the average consumer of such goods and services would have, given the Complainant’s history and status, at least a general knowledge of the names by which it is known, the fact that it offers its services in different languages in different countries, and what it does.
Only two steps are required to get from one of the Complainant’s trademarks (SAXOBANK.COM) to the disputed domain name: the French translation of the “bank” component of “saxobank”; and the insertion of a hyphen between “saxo” and “bank”. Given this small conceptual gap, and given the operations of the Complainant’s subsidiary in the French language and using a domain name that is yet conceptually closer still to the disputed domain name, the Panel is satisfied that the average Internet consumer of financial services would be led to believe that the website that the disputed domain name resolves to is associated with, or licensed in some way by, the Complainant.
The same reasoning applies to the Complainant’s SAXOBANK trademark, with the only difference being the addition in the disputed domain name of the TLD suffix “.com”. A previous WIPO panel in Lancome Parfums et Beaute & Cie, L’Oreal v 10 Selling, WIPO Case No. D2008-0226 confirmed that “the addition of the suffixes “.com” or “.info” is non-distinctive because it is required for the registration of the domain name”.
In essence, the Panel finds that the Respondents are engaging in an obvious example of what is commonly known as “typo-squatting”. Numerous WIPO UDRP panels have found this practice sufficient to create confusingly similar domain names: see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Lancome Parfums et Beaute & Cie, L’Oreal v 10 Selling, WIPO Case No. D2008-0226.
Given this conclusion, it is not necessary for the Panel to decide whether the Complainant has any unregistered rights in any of the other marks it uses, such as its French subsidiary’s company name or website. However, were such found to be the case, the Panel would also be of the opinion that the disputed domain is confusingly similar to all of the following: the Complainant’s company name, the Complainant’s website, the Complainant’s French Subsidiary’s company name, and the Complainant’s French subsidiary’s website.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways in which a respondent can show rights or a legitimate interest in a domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; 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 or service mark at issue.
The onus of proof under this head is discussed at paragraph 2.1 of the Center’s document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, summarising the consensus view of various WIPO UDRP panels:
[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel finds that the Complainant has made out a prima facie case of a lack of rights or legitimate interests of the Respondents. The following factors lead to this conclusion: the confusing similarity of the disputed domain name with the Complainant’s trademarks; the lack of authorisation by the Complainant of the Respondents to use its trademarks; and the lack of any evidence that the Respondents have been commonly known by the disputed domain name or any similar phrase.
To the extent that there is not positive evidence of the a lack of rights of legitimate interests of the Respondents, the Panel, following the default of the Respondents in these proceedings, draws adverse inferences from this default so as to find the prima facie case established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances showing bad-faith registration and use of a domain name:
(i) circumstances indicating that [the respondent has] registered or [the respondent] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the 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 you have engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Complainant must prove both bad faith registration and bad faith use to make out this ground: see the summary of the recent WIPO UDRP jurisprudence in this area in Yeshiva University v SS Media, Joy Dhivakar S Singh, WIPO Case No. D2010-1588.
Bad faith registration and use are discussed in turn.
As outlined above, the Panel concludes that the Respondent was aware of the existence of the Complainant’s marks and activities at the time of registration. Although the disputed domain name does not entirely incorporate a trademark of the Complainant, it has been found about that it does incorporate something that is quasi-identical.
The Panel finds that this fact, combined with the Respondents’ knowledge at the time of registration, constitutes bad faith registration: see Caesars World, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425.
Furthermore, as this Panelist concluded in Compagnie Gervais Danone v Transure Enterprise Ltd / Privacy, WIPO Case No. D2009-1019, the Second Respondent’s use of a “private registration” service when registering the disputed domain name is strong evidence of bad faith registration. Such services strongly undermine the public benefit that flows from an open and transparent registration system, and prospective registrants should be discouraged from using them in the knowledge that such use may well count against them in any dispute that may subsequently arise in respect of a domain name.
As to bad-faith use, the Panel finds that the circumstance enumerated in paragraph 4(b)(iv) of the Policy is clearly made out. The Respondents are using a domain name incorporating an element that is quasi-identical to the Complainant’s trademarks to direct Internet users to a website that offers services in direct competition to those of the Complainant. Indeed, the appearance of the website, and in particular its predominant colour and diction, to which the disputed domain name resolves perpetuates the deception.
This has the effect not only of allowing illegitimate traffic and commercial gain to accrue the Respondents, via its free-loading off the Complainant’s trademarks, it also has the potential to tarnish the reputation of the Complainant in the eyes of those Internet users who, having been deceived by the Respondents’ “typo squatting”, may be less than satisfied with the financial services they receive.
Such an arrangement has also been widely condemned in previous WIPO UDRP decisions as bad faith use: see Caesars World, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425; Wilmington Trust Company v. Domaincar, WIPO Case No. D2006-0045; and Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <saxo-banque.com> be transferred to the Complainant.
Dated: February 21, 2011
1 Numerous previous panels have noted that “Domains by Proxy, Inc.” is in fact a privacy service offered by the concerned registrar. See e.g. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181;
Rosa Maria Clarà Pallarès v. Domains by Proxy, Inc. / Domain Discreet / Dennis Heinz, WIPO Case No. D2010-0867; and The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc., WIPO Case No. D2010-0034.