WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IP Holdings (Antigua) Ltd. v. MohammadReza FakhrMoghaddam / Contact Privacy Inc. Customer 0134093084
Case No. D2015-0354
1. The Parties
The Complainant is IP Holdings (Antigua) Ltd. of Antigua and Barbuda, represented by Pella Demetriades, Cyprus.
The Respondent is MohammadReza FakhrMoghaddam of Iran (Islamic Republic of)/ Contact Privacy Inc. Customer 0134093084 of Canada.
2. The Domain Name and Registrar
The disputed domain name <forextime.biz> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2015. On March 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 the Complainant on March 4, 2015 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 March 5, 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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on April 2, 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.
4. Factual Background
The Complainant is the owner of the International Trademark registrations No. 1170045 for FOREXTIME (word mark), registered on May 27, 2013, for services in classes 35, 36 and 42, designating European Community, and No. 1170046 for IT'S FOREX TIME (word mark), registered on May 27, 2013, for services in classes 35, 36 and 42, designating European Community. The priority date claimed in connection with both trademarks is April 5, 2013, based on corresponding trademark applications in Cyprus.
The trademark FOREXTIME is used to promote the products and services of ForexTime Ltd, by virtue of an agreement between said company and the Complainant. ForexTime Ltd , incorporated under the laws of the Republic of Cyprus, engages in the business of online forex trading and operates a web site at <forextime.com>, registered on April 6, 2003.
The disputed domain name <forextime.biz> was registered on April 1, 2013, and, according to the evidence on records, was pointed to the URL address "http://ironfx.com/", promoting a company trading online forex, spot metals, stocks and futures. At the time of the drafting of the decision, the disputed domain name is not pointed to an active web site.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar, if not almost identical, to its registered trademarks.
The Complainant states that the Respondent has no rights or legitimate interest in the disputed domain name since:
- the Respondent is not associated with the Complainant's trademark FOREXTIME in any way;
- the sole fact that the disputed domain name is used to divert Internet traffic to the web site "http://ironfx.com/"is evidence of the Respondent's lack of legitimate interest in the disputed domain name;
- the Respondent has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
- the Respondent takes an unfair advantage of the commercial value of the trademark FOREXTIME and the Complainant's web site "www.forextime.com";
- the Respondent has not been commonly or otherwise known by the disputed domain name;
- the Respondent is luring members of the public to a web site which has no connection with the Complainant;
- the public is misled into thinking that the Respondent and/or the website "www.ironfx.com" is associated with the Complainant, the website "www.forextime.com" or ForexTime Ltd, which is a registered and licensed online forex broker;
- a use which intentionally trades on the fame of another trademark cannot constitute a bona fide offering of goods or service;
- the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademarks, while the Complainant has prior rights in the trademarks which precede the Respondent's registration of the disputed domain name.
With reference to the circumstances evidencing the Respondent's bad faith use, the Complainant states that the disputed domain name is used to direct traffic to the web site http://www.ironfx.com/en, promoting a competitor of the Complainant, also active in the online forex trading industry.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of International Trademark registrations for FOREXTIME and IT'S FOREX TIME, both registered on May 27, 2013, but claiming the priority date of April 5, 2013, which postdates of four days the registration date of the disputed domain name (April 1, 2013).
As mentioned in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "if a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights". Moreover, as highlighted in paragraph 1.4, "[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights".
The disputed domain name <forextime.biz> entirely reproduces the Complainant's registered trademark FOREXTIME with the mere addition of the generic Top-Level Domain ".biz", which is typically not considered for the purpose of determining identity or confusing similarity in UDRP proceedings.
The Panel therefore finds that the disputed domain name is identical to the Complainant's registered trademark FOREXTIME according to paragraph 4(a)(i) of the Policy.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant's registered trademark IT'S FOREX TIME, as the disputed domain name includes the entire combination of the terms "forex" and "time" incorporated in the Complainant's trademark with the mere deletion of the prefix "it's", which is insufficient to eliminate the risk of confusion.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the Complainant's statements, that the Respondent has not challenged, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name.
In addition, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name and the Panel finds that the Respondent's use of the disputed domain name, identical to the Complainant's trademark FOREXTIME, to redirect users to the web site of a Complainant's competitor does not amount to a bona fide offering of goods or services, or to a legitimate, non-commercial or fair use.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned above, the disputed domain name was registered almost two months before the registration of the Complainant's International Trademarks and four days before the filing of the Complainant's trademark application in Cyprus, on which the International Trademarks are based.
Generally speaking, when a domain name is registered 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 because the registrant could not have contemplated the complainant's then non-existent right. However, in situations where it is clear that a respondent is aware of the complainant and that the aim of the registration was to take advantage of the confusion between a domain name and any potential complainant rights, bad faith can be found (paragraph 3.1 of the WIPO Overview 2.0).
In the case at hand, in light of the identity of the disputed domain name with the domain name <forextime.com>, which was registered and used to promote the online forex trading activity of the Complainant's affiliated company ForexTime Ltd prior to the registration of the disputed domain name, the Panel finds that the Respondent's registration cannot be ascribed to a mere coincidence. The Panel came to this conclusion also in light of the outcome of a search for "www.forextime.com" through the "Wayback machine" provided on the web site "www.archive.org", as historical pages of the Complainant's web site were proof of use of the Complainant's trademark FOREXTIME can be found at least as of May 22, 2011.
In the absence of a Response from the Respondent and in light of the evidence submitted by the Complainant as to the redirection of the disputed domain name to a web site operated by a competitor of the Complainant, the Panel finds that, on balance of probabilities, the disputed domain name was registered and used by the Respondent to divert users to another web site and cause disruption of the Complainant's business according to paragraph 4(b)(iii) of the Policy.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <forextime.biz> be transferred to the Complainant.
Date: April 17, 2015