WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OANDA Corporation v. PrivacyProtect.org, James Oanda / Alex Goyman /Andrey Ivanov
Case No. D2013-1133
1. The Parties
The Complainant is OANDA Corporation of New York, United States of America, represented internally.
The Respondent is PrivacyProtect.org, James Oanda / Alex Goyman / Andrey Ivanov of Nobby Beach, Queensland, Australia, The Trewer City, New York, Ukraine and Mykolaiv, Ukraine, respectively.
2. The Domain Name and Registrar
The disputed domain name <oandafx.net> is registered with DomainContext, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2013. On June 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2013, the Registrar transmitted by email to the Center its verification 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 June 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On June 27, 2013, the Complainant, instead, informed the Center that the registrant of the disputed domain name confirmed by the Registrar (Alex Goyman) appeared to be differed from the registrant named in the WhoIs of that date (Andrey Ivanov).
In response to an email communication from the Center requesting clarification regarding the registrant of the disputed domain name, the Registrar, on June 28, 2013, confirmed that the registrant was Andrey Ivanov. The Center sent an email communication to the Complainant on July 2, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted an amended Complaint on the same 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on August 14, 2013. 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 Delaware corporation which makes currency exchange information available over the Internet by publishing a broad range of currency information on its website. It was one of the first companies to offer fully-automated online currency trading. It has been honored with various awards and has expanded its resources and efforts to create a reputation in the foreign exchange industry. The Complainant and its subsidiaries operate globally and are subject to strict regulatory controls in various jurisdictions.
The Complainant has been in business since 1995. It registered the domain name <oanda.com> in 1996. It has also registered many other versions and/or extensions of the original domain name.
The Complainant registered the distinctive name OANDA as a service mark in the United States on August 17, 2004.
The Complainant owns registered trademarks in several other jurisdictions. All its various trade mark registrations occurred years before the registration by the Respondent of the disputed domain name on March 26, 2012.
The Respondent has not been granted any license or authority or consent by the Complainant to use the registered trademark OANDA in a domain name or in any manner whatsoever. The Complainant’s trademark is distinctive. The word “oanda” does not have any independent meaning in the English language.
On the website accessed by the disputed domain name, the Respondent is using images of the Complainant’s products and plagiarized text and images that refer to the Complainant’s history, products and services. These are directly copied from the Complainant’s Website.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The suffix FX denotes foreign exchange and adds to the confusing similarity, particularly when the disputed domain name contains all the letters of the registered trademark. Various WIPO UDRP panels have held that a descriptive or generic addition to a trademark, particularly one that designates the goods and services where the mark is used, enhances the confusing similarity between a domain name and a trademark.
The Respondent has no rights or legitimate interests in respect of the dispute domain name. The Complainant gave it none. Nor do any of the situations set out in paragraph 4(c) of the Policy apply. Rather, the Respondent is using the Complainant’s products in plagiarized texts and images.
The disputed domain name was registered and is being used in bad faith. This is shown by the action of the Respondent in plagiarizing the Complainant’s website and using the Complainant’s reputation as a leader in the foreign exchange industry to claim “a great Fx profit”. The Respondent deliberately and maliciously refers to the Complainant’s products and takes advantage of the Complainant’s goodwill and reputation in the foreign exchange industry.
The Respondent must attract Internet users to its website for commercial gain. This conduct not only constitutes illegitimate use of the Complainant’s trademark, but also constitutes bad faith. The Respondent is intentionally promoting the sale of foreign exchange while disregarding the high risk involved and is leveraging the Complainant’s valuable goodwill, established in its registered trademark. Plus the Respondent misleads and confuses Internet users and consumers into thinking that the Respondent’s products are endorsed by the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is obviously confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the whole of the trademark and adds the generic expression “fx” which is a well-known abbreviation for foreign exchange – the business in which the Complainant is involved. The Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no right to reflect its trademark in the disputed domain name. In the absence of any claim by the Respondent to come within Paragraph 4(c) of the Policy, this is sufficient to satisfy Paragraph 4(a)(iii) of the Policy.
The Respondent has not sought to come within any of the limits of Paragraph 4(c) of the Policy which, if proved, could have provided a defense.
Accordingly, Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The blatant action of the Respondent in reproducing the Complainant’s website, plagiarizing the Complainant’s text and images is overwhelming evidence of bad faith registration and continuing bad faith use.
The Disputed Domain Name was registered years after the Complainant had registered its trademarks and years after it had established its substantial online foreign exchange business. Clearly, Internet users are likely to think that the website accessed by the disputed domain name was that of or was connected to the Complainant.
It is hard to think of a more flagrant abuse of another’s trademark. The inference of bad faith registration use is irresistible. The use by the Respondent of a privacy domain site does nothing to add to any perception of legitimacy.
The Complainant has therefore satisfied Paragraph 4(a)(iii) of the Policy.
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, <oandafx.net>, be transferred to the Complainant.
Sir Ian Barker
Date: August 22, 2013