WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forextime IP Holdings Ltd. v. Markets World / Peter Smith, Bobs Limited
Case No. D2014-0422
1. The Parties
Complainant is Forextime IP Holdings Ltd. of Limassol, Cyprus, represented by Loukis Loucaides and Pella Demetraides, Cyprus.
Respondent is Markets World of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland ("UK") / Peter Smith, Bobs Limited of Douglas, Isle of Man, UK.
2. The Domain Name and Registrar
The disputed domain name <forexxtime.com> is registered with Sibername Internet and Software Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2014. On March 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2014, 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 Complainant on March 28, 2014, 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 on March 31, 2014.
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 Respondent of the Complaint, and the proceedings commenced on April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. The Response was filed with the Center on April 21, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on April 30, 2014. 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
Complainant is holder of the International trademark registration FOREXTIME with registration number 1,170,045 for services in classes 35, 36 and 42 including business administration, financial affairs, monetary affairs and scientific and technological services relation thereto (the "FOREXTIME Trademark"), and International trademark registration IT'S FOREX TIME with registration number 1,170,046 for the same services. Both trademarks were filed on May 27, 2013 with priority based on identical Cypriot trademarks of April 5, 2013 for the European Union as designated jurisdiction (both trademarks together are referred to as the "Trademarks").
Respondent registered the disputed domain name on May 23, 2013 and used it to direct visitors directly to its website at "www.marketsworld.com".
5. Parties' Contentions
Complainant is holder of the Trademarks. It uses the Trademarks for the purpose of promoting the products and services of ForexTime Ltd by virtue of an agreement between Complainant and such company. ForexTime Ltd is a licensed online forex broker, which the Panel understands as ForexTime Ltd being licensed to trade in currency. According to the website under the disputed domain name Respondent is involved in the online binary option trading industry and, hence, is in direct competition with ForexTime Ltd.
Complainant claims that the disputed domain name is confusingly similar and nearly identical to the Trademarks as the disputed domain name sounds the same as the Trademarks and the spelling of the disputed domain name is confusingly similar to the spelling of the Trademarks. The addition of an extra "x" in the disputed domain name does not serve sufficiently to distinguish the disputed domain name from the Trademarks.
Respondent is in no way associated with the FOREXTIME Trademark. Complainant further asserts that the sole fact that the disputed domain name is used to divert Internet traffic on another website is evidence of Respondent having no legitimate interest in registering the disputed domain name. Respondent takes unfair advantage of the commercial value of the FOREXTIME Trademark and misleads the public into thinking that Respondent and/or the website to which the disputed domain name links is associated with Complainant and/or ForexTime Ltd.
Respondent is using the disputed domain name to direct traffic which was otherwise intended for Complainant's website, which is clear evidence of bad faith.
Respondent claims that the disputed domain name automatically links to the website "www.marketsworld.com", which website does not use the FOREXTIME Trademark in any way so that there is no effort to confuse or mislead Internet users. It is clear to Internet users that they have arrived at the "www.marketsworld.com" website which has no relationship with Complainant or its affiliated companies. According to Respondent website addresses are akin to real estate or plots of land on the Internet, and the website address for "www.marketsworld.com" is in close proximity to Complainant's website under its domain name <forextime.com>. There is, according to Respondent, nothing inappropriate in buying a commercial premise near an existing business and offering potential customers a clear choice of distinct offerings. Internet users who are looking for the website of Complainant and instead through their own navigational error end up at the wrong address will immediately realize that they have not reached their intended destination. There is no possibility that they will confuse Respondent's website under the disputed domain name with Complainant's website under the FOREXTIME Trademark.
Respondent claims that it paid good consideration "for this piece of Internet real estate", i.e. the acquisition of the disputed domain name. It uses the disputed domain name in good faith as part of its overall business plan and strategy. Respondent's activities under the disputed domain name constitute a bona fide offering of goods under the Policy.
Finally, Respondent remarks that Complainant only registered the FOREXTIME Trademark on May 27, 2013, which is after Respondent registered the disputed domain name so that, as the Panel believes he should understand Respondent, the Panel should disregard the existence of such trademark when deciding this case.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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 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
In the present case Complainant has sufficiently demonstrated that it has rights in the Trademarks. It is further well established that generic Top-Level Domains ("gTLD") such as ".com" may be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). With this in mind, the only difference between the disputed domain name and the FOREXTIME Trademark is the extra "x" between "forex" and "time". This addition is obviously meant as a misspelling and the FOREXTIME Trademark is still very recognizable within the disputed domain name.
The Panel is therefore satisfied that the disputed domain name is confusingly similar to the Trademarks and that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Complainant showed that Respondent operates a website under the disputed domain name which automatically links to Respondent's website "www.marketsworld.com", which website is in direct competition with Complainant's website under the FOREXTIME Trademark. The Panel rejects Respondent's claim that registration of domain names should be compared with acquisition of real estate or plots of land and that Complainant should therefore accept that a direct competitor operates a website under a domain name which is nearly identical to its Trademarks, as such reasoning is fundamentally different from and inapplicable to the very principles of the Policy. It is well established that using a domain name confusingly similar to a complainant's trademark to redirect Internet users to a competitor's website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
In absence of any other explanation why Respondent chose to register and use the disputed domain name and why it would be allowed to do so, the Panel concludes that Respondent has no rights and legitimate interests in the disputed domain name, so that the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Respondent put forward that the disputed domain name was registered before the registration of the FOREXTIME Trademark. According to the consensus view (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.1) generally speaking, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith. However, in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. The Panel is of the opinion that there are elements in this case which justify a finding of bad faith of Respondent's registration of the disputed domain name. The disputed domain name was registered only four days before the registration of the Trademarks. The Trademarks relied on priority based on identical national Cypriot trademarks which preceded the registration date of the disputed domain name. Complainant or Forextime Ltd also used the domain name <forextime.com> for their website which domain name, according to the WhoIs database, was registered on April 6, 2003. The activities of the website of Complainant or Forextime Ltd on the one hand and those of the website under the disputed domain name on the other hand are similar and competing with each other. In the view of the Panel it is therefore likely that Respondent was or must have been aware of Complainant and (the use of) "Forextime" as a trademark when it registered the disputed domain name, and considering the use of the disputed domain name, that the aim of the registration was to take advantage of the confusion between the disputed domain name and the Complainant's potential rights in the FOREXTIME mark. The Panel therefore finds that the disputed domain name was registered in bad faith.
The Panel is further satisfied that the disputed domain name has been used in bad faith as well, as Respondent acknowledged that Internet users who mistyped the Complainant's domain name <forextime.com> as the disputed domain name are automatically directed to Respondent's competing website. By doing this Respondent uses the disputed domain name to attract traffic to its website which was intended for Complainant, thereby taking advantage of the goodwill in the FOREXTIME Trademark.
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 <forexxtime.com> be transferred to Complainant.
Date: May 12, 2014