WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Exness Holdings CY Limited v. zhou shaozhe
Case No. D2015-0923
1. The Parties
The Complainant is Exness Holdings CY Limited of Limassol, Cyprus, represented by Crowell & Moring, LLP, Belgium.
The Respondent is zhou shaozhe of Liuzhou, Guangxi, China.
2. The Domain Names and Registrar
The disputed domain names <exeess.com>, <exneess.com>, <forex-exness.com> and <www-exness.com> (the "Disputed Domain Names") are registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 2 and June 3, 2015, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 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 June 18, 2015.
On June 2, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 5, 2015, the Complainant confirmed its request that English be the language of the proceeding. On June 6 and 7, 2015, the Respondent sent three emails to the Center requesting Chinese be the language of the proceeding. On June 18, 2015, the Center received five emails of the same content from the Respondent stating that it could not understand the content of the Acknowledgment of Receipt sent by the Center although it was written in both Chinese and English. On June 24, 2015, the Respondent again sent an email to the Center demanding that the Complaint be filed in Chinese failing which the Complaint should be refused.
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 in both Chinese and English, and the proceeding commenced on June 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2015. Apart from the several informal email communications received from the Respondent concerning the language of the proceeding, no formal Response was received by the specific due date. Accordingly, the Center notified the Parties that it would proceed to the panel appointment process on July 14, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 22, 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 part of the Exness Group which was founded in 2008 and offers traders the ability to trade more than 120 financial instruments. In December 2011, the Exness Group received an ISO 9001: 20008 certification for "Organizing Forex trading". By early 2014, the trading volume of clients of the Exness Group has exceeded USD 100 million.
The Complainant uses the word mark EXNESS and a figurative mark incorporating the same (the "EXNESS Trademark") in connection with its business. The Complainant owns the following trademark registrations for the EXNESS Trademark:
January 19, 2012
September 12, 2012
Both registrations designate China and have been issued grant of protection in China.
The Exness Group also operates a website at "www.exness.com" (the "EXNESS Website"). The EXNESS Trademark is featured prominently on the EXNESS Website. The domain name <exness.com> was registered on August 26, 2008.
The Respondent is an individual who registered the Disputed Domain Names between October 15, 2013 and October 3, 2014. On February 20, 2015, the Disputed Domain Name <exneess.com> redirected Internet users to the EXNESS Website. Very little information about the Respondent is known. The identity of the Respondent was not shown on the WhoIs information association with the Disputed Domain Names but was revealed by the Registrar in the course of the proceeding. The WhoIs information did not indicate any physical address beyond the city, Liuzhoushi, and province, Guangxi, of the Respondent in China.
5. Parties' Contentions
The Complainant contends that:
a) The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Disputed Domain Names <exneess.com> and <exeess.com> are nearly identical to the EXNESS Trademark, except for the addition of the letter "e" and the replacement of the letter "n" with the letter "e" respectively, which are common or obvious misspellings of the EXNESS Trademark. The Disputed Domain Names <forex-exness.com> and <www-exness.com> incorporate the EXNESS Trademark in its entirety. The addition of the hyphen and the generic terms "forex" or "www" do not detract from the distinctiveness of the EXNESS Trademark;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not commonly known by the Disputed Domain Names. The Respondent has not acquired any trademark rights and use of the Disputed Domain Names was not authorized by the Complainant. No contemplated bona fide or legitimate use of the Disputed Domain Names could reasonably be claimed. The Disputed Domain Name <exneess.com> redirects to the EXNESS Website; and
c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent must have known of the Complainant and the EXNESS Trademark at the time the Respondent registered the Disputed Domain Names. The Respondent nevertheless registered the Disputed Domain Names incorporating the EXNESS Trademark in circumstances where the Respondent had no rights or legitimate interests in the EXNESS Trademark. The Disputed Domain Names redirect to the EXNESS Website. The Disputed Domain Name <forex-exness.com> contains the word "forex" which refers directly to the Complainant's business. Use of the Disputed Domain Names suggests an endorsement of, or affiliation with the Respondent's service by the Complainant. Redirecting the Disputed Domain Names to the EXNESS Website serves to increase customer confusion. There is a high likelihood of fraudulent use of the Disputed Domain Names in the regulated sector in which the Complainant is operating.
Apart from the several informal email communications received from the Respondent concerning the language of the proceeding as indicated in paragraph 4 above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Complainant has requested that English be adopted as the language of the proceeding. The Respondent has, on the other hand, requested that the proceeding should be conducted entirely in Chinese.
The language of the Registration Agreements is Chinese. The default language of the proceeding should accordingly be Chinese. Pursuant to paragraph 11(a) of the Rules, the Panel is authorized to determine otherwise having regard to the circumstances. Having done so, the Panel determines that English shall be the language of the proceeding with liberty for the parties to submit documents in either Chinese or English. In coming to this decision, the Panel has considered the following factors:
a) The Complaint has already been submitted in English;
b) The Respondent did not formally file a Response;
c) From the Respondent's comments following the Complainant's request, the Respondent appears familiar with the Policy and the Rules. The Respondent should be in a position to understand the issues relevant to the proceeding thereunder, or at least appreciate the consequences thereof;
d) Regardless of the Respondent's language proficiency, the nature of the proceeding under the Policy is such that parties will clearly benefit from professional help. The Respondent was free to enlist professional assistance in this proceeding;
e) The Internet is a global phenomenon and domain name registrants cannot fairly pretend that Internet content referenced by a domain name have geographically limited access. Just as geographical boundaries are being breached by the modern day Internet, language boundaries are breaking down in the face of ubiquitous and powerful tools like live machine translation engines. In particular, popular languages like English can be easily made intelligible in Chinese, and vice versa, by online translation tools;
f) The Panel is bilingual in English and Chinese and is equipped to review documents submitted by the parties in either language;
g) Insisting on a Chinese translation of the Complaint would delay the proceeding and impose unnecessary hardship on the Complainant; and
h) The Policy is intended to offer an expeditious and cost-effective avenue to parties aggrieved by abuse of the domain name system, particularly contrary to trademark rights. This Panel is of the view that the proceeding under the Policy should not be unduly obstructed by choice of language, especially if such choice concerns the global language of commerce, English.
To succeed in this proceeding, the Complainant must show that the circumstances in respect of the Respondent fall within all three limbs of paragraph 4(a) of the Policy as follows:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In view of the trademark registrations for the EXNESS Trademark, the Panel has little difficulty finding that the Complainant has rights in the same. The Panel also has little difficulty accepting the Complainant's submission that the Disputed Domain Names <forex-exness.com> and <www-exness.com> incorporate the EXNESS Trademark in its entirety.
The addition of the descriptive prefix "forex" to <forex-exness.com> does not detract from the distinctiveness and identity of the EXNESS Trademark and the Panel holds that <forex-exness.com> is confusingly similar to the EXNESS Trademark. The Disputed Domain Name <www-exness.com> is an obvious typographical variation of the URL for the EXNESS Website wherein the period ("." character) in the URL has been replaced by a hyphen ("-" character). The "www" element is a common subdomain for locating a HTTP resource on the Internet and also does not detract from the distinctiveness and identity of the EXNESS Trademark. Therefore, the Panel holds <www-exness.com> to be confusingly similar to the EXNESS Trademark.
The Disputed Domain Names <exneess.com> and <exeess.com> each differ from the EXNESS Trademark by one character, namely the addition of a letter "e" in <exneess.com> and the substitution of the letter "n" by a letter "e" in <exeess.com>. The Panel agrees with the Complainant that these are obvious misspellings of the EXNESS Trademark and is of the view that these Disputed Domain Names are also confusingly similar to the EXNESS Trademark.
In view of the above, the first limb of paragraph 4(a) of the Policy has been established by the Complainant in relation to all the Disputed Domain Names.
B. Rights or Legitimate Interests
There is nothing in the evidence to suggest that the Respondent is commonly known by any of the Disputed Domain Names. There is also no evidence before the Panel that the Respondent holds any rights in respect of any of the Disputed Domain Names. On the other hand, the Complainant has shown on the evidence that it owns trademark rights in the EXNESS Trademark, including in China. The Complainant has confirmed that it has not authorized the Respondent to use the EXNESS Trademark in the Disputed Domain Names. There is also no evidence before the Panel of any bona fide use or contemplated use of the Disputed Domain Names. In the Panel's view, the redirection of Internet users from the Disputed Domain Names to the EXNESS Website in this case is not suggestive of any bona fide noncommercial use.
It is a consensus of past UDRP panels that a complainant is required only to show a prima facie case that a respondent has no rights or legitimate interests following which the burden of showing otherwise shifts to the respondent to rebut the same. The Panel is satisfied that the Complainant has shown a prima facie case in this case in respect of all the Disputed Domain Names. The burden of showing otherwise accordingly shifts to the Respondent to show that it has rights or legitimate interests in the Disputed Domain Names. Since no Response was filed, the prima facie case is unrebutted. The Panel holds that the second limb of paragraph 4(a) of the Policy is also established in the circumstances.
C. Registered and Used in Bad Faith
The Respondent's awareness of the EXNESS Trademark is patent. The trademark registrations for the EXNESS Trademark pre-date the registration of all the Disputed Domain Names. The evidence shows unequivocally that the Disputed Domain Name <exneess.com>, which has the earliest registration date among the four Disputed Domain Names, redirected Internet users to the EXNESS Website. The Respondent could hardly claim ignorance of the EXNESS Trademark. On a balance of probabilities, the Respondent's awareness would likely have existed at the time the Disputed Domain Name <exneess.com> was registered. The incorporation of the EXNESS Trademark within <forex-exness.com> and <www-exness.com> and the obvious similarity of <exneess.com> and <exeess.com> to the EXNESS Trademark corroborates such finding. The Panel accordingly finds that the Respondent was aware of the EXNESS Trademark at the time of registering each of the Disputed Domain Names.
Having made this finding, the Panel turns to the following statement in LANCOME PARFUMS ET BEAUTE & CIE, L'ORÉAL v. 10 Selling, WIPO Case No. D2008-0226, quoted by the Complainant to support the contention that a respondent who knew or should have known of a complainant's trademark rights but nevertheless registered the domain names incorporating the trademark in circumstances where the respondent has no rights or legitimate interests in the trademark is a basis for finding bad faith:
"[…] knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith."
The Panel notes that LANCOME PARFUMS ET BEAUTE & CIE, L'Oréal v. 10 Selling, supra quoted the above statement from the earlier case of Caixa D´Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464, before stating that "[…] that finding would suffice to dispose of the issue of bad faith registration". The Panel is of the view that LANCOME PARFUMS ET BEAUTE & CIE, L'ORÉAL v. 10 Selling, supra does not stand for a general rule that knowledge of a corresponding mark at the time of registering a domain name equates to bad faith. In that case, the critical words of the learned panel were that such finding disposes of the issue of "bad faith registration", which falls short of the third limb of paragraph 4(a) of the Policy. The third limb of paragraph 4(a) of the Policy requires that bad faith registration and use be established. It is therefore not surprising that the learned panel in that case went further to find bad faith within the meaning of the third limb of paragraph 4(a) of the Policy under the well-established ground of passive holding. The learned panel in the earlier case of Caixa D´Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, supra also went further to establish bad faith under paragraph 4b)(ii) of the Policy.
Returning to the Complainant's contention that knowingly registering a domain name incorporating a trademark in the absence of rights or legitimate interests in the trademark is bad faith, the Panel is reminded of the insightful words of the learned panel in Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, which are reproduced below:
"[…] Bad faith is not proven by showing that Respondent lacks any rights to or legitimate interests in the Domain Name. That is a separate and distinct factor, with its own proof requirements. If the Panel adopted Complainant's approach, it would have the practical effect of conflating the second and third requirements. Such an approach is not supported by the clear wording of the Policy, which separates the requirements in Paragraph 4(a) into three distinct elements, and provides separate examples (Paragraphs 4(b) and 4(c)) of how to satisfy the second and third factors."
The Panel agrees with the analysis of the learned panel in Document Technologies, Inc. v. International Electronic Communications Inc., supra. As such, even though the second limb of paragraph 4(a) of the Policy is established herein (see above), the fact that the Respondent had the requisite knowledge of the EXNESS Trademark at the time of registering the Disputed Domain Names alone would not equate to bad faith within the meaning of the third limb of paragraph 4(a) of the Policy.
However, such knowledge replicated four times in the registration of four Disputed Domain Names over the period of about a year, two of which entirely incorporate the EXNESS Trademark and two of which are obvious typographical variants of the EXNESS Trademark, exhibits an uncanny pattern of conduct. It is inconceivable that the redirection of Internet users by the Disputed Domain Name <exneess.com> to the EXNESS Website stems from some voluntarily altruistic design of the Respondent. If anything, this raises a strong inference of surreptitious undertakings or at least the likely potential thereof. The Respondent could have set aside such inference by offering a cogent explanation in a Response, either in English or Chinese. The Respondent could also have provided some evidence of actual or contemplated good faith use of one or more of the Disputed Domain Names. Unfortunately, these were not forthcoming.
To borrow the words of the learned panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the facts are such that "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use" the Disputed Domain Names. Having regard to the present circumstances, the Panel is convinced that they accord with the exemplification of bad faith described in paragraph 4(b)(ii) of the Policy. The Respondent has exhibited a pattern of conduct in registering the four Disputed Domain Names to prevent the Complainant from reflecting the EXNESS Trademark in corresponding domain names and the Panel holds that bad faith pursuant to paragraph 4(b)(ii) of the Policy has been established accordingly.
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 Names, <exeess.com>, <exneess.com>, <forex-exness.com> and <www-exness.com>, be transferred to the Complainant.
Kar Liang Soh
Date: August 5, 2015