WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Exness Holdings Cy Limited v. MOHAMMAD ALI / Domains By Proxy, LLC, DomainsByProxy.com
Case No. D2014-1876
1. The Parties
The Complainant is Exness Holdings Cy Limited of Limassol, Cyprus, represented by Crowell & Moring, LLP, Belgium.
The Respondent is MOHAMMAD ALI of New Jersey, United States of America / Domains By Proxy, LLC, DomainsByProxy.com of Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <exness-bd.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2014 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 November 4, 2014.
The Center verified that 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 November 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 22, 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.
The invitation to the Complainant to file an amended Complaint (see above) stemmed from the fact that the first above-named Respondent, the underlying registrant of the Domain Name, was using a proxy service, the second above-named Respondent, which concealed its identity from anyone consulting the Registrar’s WhoIs database. For the purposes of this decision the Panel treats all the named Respondents as one and references in this decision to the “Respondent” are references to all of them.
4. Factual Background
The Complainant is a Cyprus based financial services company, which commenced business in 2008. It is the registered proprietor of International Trade Mark Registration No. 1119502 EXNESS (figurative mark) dated January 19, 2012 and International Trade Mark Registration No. 1133115 dated September 12, 2012 EXNESS (word). Both registrations are in Class 36 for a variety of financial services.
Further, the Panel is satisfied, on the unchallenged evidence of the Complainant, that by the dates of those trade mark registrations the Complainant had established a significant goodwill under and by reference to the mark, EXNESS, and had acquired unregistered trade mark rights in respect of it.
The Complainant operates a website connected to its domain name, <exness.com>, which it registered on August 26, 2008.
The Domain Name was registered on November 2, 2013 and is connected to a website which replicates in large measure the appearance and style of the Complainant’s website. The Respondent’s website features prominently a substantially identical replica of the Complainant’s distinctive figurative trade mark, alongside which appears the legend “EXNESS BANGLADESH”. The homepage describes the Respondent business as “a service orientated consultancy organization which provides services to all EXNESS clients in Bangladesh…”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s EXNESS trade mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and, finally, contends that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s EXNESS trade mark, followed by “-bd” and the generic “.com” top level domain identifier. Neither the addition of “-bd”, “bd” being the country code for Bangladesh, nor the “.com” suffix detracts in any way from the distinctiveness of the Complainant’s trade mark.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
While it is for the Complainant to prove all 3 elements of paragraph 4(a) of the Policy, in the case of the second element (paragraph 4(a)(ii) of the Policy) it is generally sufficient in the first instance for the Complainant to make out a prima facie case calling for an answer from the Respondent. As this Panel explained in Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121,
“While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
In this case the Complainant has demonstrated by its evidence that by the date of registration of the Domain Name it was well-known in its financial services field under by reference to its EXNESS trade mark. The Respondent registered the Domain Name after the Complainant had achieved trade mark protection for EXNESS and then connected it to a website purporting to offer financial services in Bangladesh and using a substantially identical replica of the Complainant’s figurative mark. As indicated in section 4 above it is using the Domain Name to represent that it is the Bangladesh arm of the Complainant.
There seems to the Panel no obvious justification for the Respondent to have adopted the Domain Name and to be using it in the manner that it is. On the face of it, the Respondent appears to be representing falsely that it is the Bangladesh arm of the Complainant, servicing the Complainant’s clients in Bangladesh. The Respondent has offered no explanation.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
In light of the above, the Panel accepts the Complainant’s contention that the Respondent’s purpose from the outset has been to derive commercial gain on the back of the Complainant’s goodwill in respect of its EXNESS trade mark.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name <exness-bd.com> be transferred to the Complainant.
Date: December 24, 2014