WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F&C Management Limited v. D.G. / Finance and Currency Limited
Case No. D2014-2196
1. The Parties
The Complainant is F&C Management Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Keltie LLP, UK.
The Respondent is D.G. / Finance and Currency Limited of London, UK represented by Waller Pollins Goldstein Solicitors, UK.
2. The Domain Name and Registrar
The disputed domain name, <fandcfx.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 December 16, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that D.G. is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on December 22, 2014 providing further contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint on December 22, 2014. On December 23, 2014 the Respondent sent an email communication to the Center stating that the individual listed as registrant was in no way connected to the proceedings.
The Center verified that the Complaint together with the amendment to the 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 December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. On January 7, 2015 the Respondent sought an extension of time of 21 days. On January 8, 2015, the Complainant having declined to consent, the Center granted an extension of time of 4 days. Accordingly, the due date for Response was January 16, 2015. No Response having been filed, on January 19, 2015 the Center issued to the Respondent a Notice of Respondent Default. On January 20, 2015 the Respondent forwarded to the Center its email Response dated January 16, 2015, but which, due to a typographical error in the Center’s email address, never reached the Center.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 23, 2015. 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.
There are two procedural matters, which need to be dealt with by the Panel at the outset.
First, the out-of-time filing of the Response: As indicated, this arose from an inadvertent typographical error. The error was quickly rectified as soon as it was noticed. In the circumstances the Panel is prepared to treat the Response as if it had been filed in timely fashion.
Secondly, the identity of the Respondent: The proper Respondent for the Complaint was D.G., the person appearing on the Registrar’s WhoIs database as the registrant of the Domain Name. However, prior to filing the Complaint, the Complainant discovered that the entity whose website was connected to the Domain Name was a company named, Finance and Currency Limited, so it included that company as a co-Respondent. On December 23, 2014 and January 2, 2015 the Respondent and then D.G. indicated that D.G.’s name should be removed from the proceeding, because she merely registered the Domain Name on behalf of Finance and Currency Limited and has no other involvement in the matter. The Panel accepts their version of events and henceforth all references herein to the Respondent are references to both D.G. and Finance and Currency Limited, the Panel nonetheless recognizing that the beneficial owner and user of the Domain Name is the latter. However, D.G.’s name cannot be removed from this administrative proceeding, because if the Panel ultimately decides that the Domain Name should be transferred to the Complainant, the document featuring the order of the Panel needs to include in its heading the name of the registrant appearing on the Registrar’s WhoIs database. It is the Registrar who will facilitate any transfer and the Registrar needs to know that the order of the Panel is properly targeted.
4. Factual Background
The Respondent acknowledges that the Complainant “is a large and extremely reputable asset manager”1 . The Complainant is the registered proprietor of numerous trade mark registrations of and/or including the trade mark F&C in relation to a variety of financial services. One such registration is UK registration no. 00002253880 registered on May 18, 2001 (filed November 23, 2000) in classes 35 & 36 for inter alia financial affairs, monetary affairs, banking, capital investments and fiscal appraisal services.
The Respondent registered the Domain Name on August 11, 2014. At the time of filing of the Complaint the Domain Name was connected to a website offering currency exchange services under and by reference to the name “F&C FX”. It is now connected to a free parking page of the Registrar featuring sponsored advertising links for services ranging from “Saturday Loans £100-£2000” to “Tutor Positions Available”.
On October 13, 2014 the Complainant’s representative wrote to the Respondent drawing the Complainant’s attention to its trade mark rights and inter alia seeking transfer of the Domain Name. The Respondent’s lawyer responded on November 6, 2014 in an open letter disputing the claim that there was any risk of confusion arising from the Respondent’s activities. The letter asserted that the Complainant was not in the same business area in that it was not providing banking services or currency exchange services and stated that “the branding of our client’s company is entirely distinct from the branding of your client’s company.” A without prejudice letter of the same date suggested that in return for a payment of up to £20,000 to cover the cost and inconvenience of rebranding, the Respondent would be prepared to rebrand2 .
On December 12, 2014 the Respondent’s lawyer wrote again noting that he had received no reply and asking when he could expect to receive one. On December 16, 2014, having heard nothing back, he said that if he had heard nothing by the end of that week, he would consider the matter closed.
On December 17, 2014 the Complainant’s representative replied pointing out that the letters under reply were all written on behalf of another company, F and C London Limited (not the Respondent). The letter went on to deal with other matters largely beyond the scope of this administrative proceeding.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s F&C trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The essence of the Complainant’s position is that the Respondent registered the Domain Name with knowledge of the Complainant’s reputation and goodwill as represented by the Complainant’s F&C trade mark and intentionally sought to trade on the back of that reputation and goodwill by attracting visitors to its website connected to the Domain Name.
The Response, which is in the form of an email, lists twelve points, the majority of which deal with the fact that the Respondent is engaged in services involving finance and currency and that the Complainant cannot seek to monopolise those words. The Respondent contends that the parties are engaged in different areas of the financial services industry and that the Respondent’s company name is in line with the services described on its website. The Respondent contends that it is not in any way interfering with the Complainant’s business.
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 (a) the Complainant’s F&C trade mark (albeit with “and” replacing the ampersand as ampersands cannot feature in domain names), (b) the letters “FX” and (c) the generic “.com” top level domain identifier.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the top level domain identifier. Accordingly, the assessment is as to whether or not “FandC FX” or “F&C FX” is confusingly similar to F&C.
“FX” is a common abbreviation for “Foreign Exchange”. While it does not appear to be a service provided by the Complainant, it is certainly a well-known category of financial service and, in the view of the Panel, the juxtaposition of F&C, the well-known trade mark of a financial services company with “FX” a common term used in financial services, there has to be a very real risk that Internet users seeking information in the financial services area will believe the Domain Name to be associated with the Complainant.
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 F&C trade mark. The Respondent registered the Domain Name after the Complainant had achieved trade mark protection for F&C and then connected it to a website offering foreign exchange services.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent, legally represented as it is, will have been well aware that the Policy is only concerned with domain names and that the Complaint is devoted solely to the Domain Name. Yet, somewhat extraordinarily, the Response makes no reference whatever to the Domain Name and seems to concentrate upon the Respondent’s company name.
The Respondent’s answer is that its name is Foreign and Currency Limited, that “Foreign” and “Currency” are ordinary dictionary words open for anyone to use, that the service which the Respondent provides is a foreign currency service and that the website promotes precisely that service. While the Respondent does not say so expressly, the Panel assumes that the Respondent is contending that this gives the Respondent a right or a legitimate interest in respect of the Domain Name along the lines of paragraph 4(c)(i) of the Policy.
If the Respondent’s domain name were <foreignandcurrencyfx.com>, that argument might very well provide a satisfactory defence to the Complaint. However, the Respondent acknowledged in correspondence in advance of the Complaint that the Complainant “is a large and extremely reputable asset manager” and will have appreciated that F&C was the primary trade mark of the Complainant. Indeed, the Response does not assert the contrary. While the Respondent appears to be correct in arguing that the Complainant is not in the business of providing foreign exchange, it must have appreciated that in reality the Domain Name was likely to be assumed to be an arm of the Complainant. Perhaps that was why in its Response, the Respondent studiously avoided making any reference to the Domain Name. At all events, in the view of the Panel, selecting for a domain name for use in the financial services sector a name confusingly similar to the well-known trade mark of another player in the financial services sector cannot sensibly be said to give rise to a right or legitimate interest in respect of that domain name.
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
On the evidence before the Panel the Panel finds, on the balance of probabilities, that the Respondent registered the Domain Name knowing that it featured the well-known trade mark of the Complainant and hoping and anticipating that in use it would be able to attract business on the back of the reputation and goodwill of the Complainant, which through its lawyer it acknowledged to be “a large and extremely reputable asset manager”.
The fact that the Respondent failed to address the Domain Name in its Response suggests to the Panel that it had nothing useful to say in response to the Complainant’s allegations. It must have been obvious to the Respondent that a right or legitimate interest in respect of a company name does not necessarily give rise to a right or legitimate interest in respect of an acronym and particularly where that acronym so closely replicates the well-known trade mark of another in the industry.
The Respondent used the Domain Name to promote its foreign exchange financial service and on the website connected to the Domain Name made liberal use of the F&C name and logo. In the view of the Panel, for the reasons given above, that use constituted a use of the Domain Name in bad faith.
To the extent that the use complained of now appears to have ceased (currently, the Domain Name resolves to free parking page of the Registrar), the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 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, <fandcfx.com>, be transferred to the Complainant.
Date: January 25, 2015
1 Respondent’s lawyer’s letter of November 6, 2014.
2 Generally, the without prejudice rule does not apply to proceedings under the Policy for the reasons set out in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Advance Magazine Publishers Inc. v Marcellod Russo, WIPO Case No. D2001-1049. In this case, while the Panel has read the letter in question, the offer to rebrand for up to GBP 20,000 has not formed part of this decision.