WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FxPro Financial Services Ltd v. Daniel Bruno
Case No. D2017-1636
1. The Parties
The Complainant is FxPro Financial Services Ltd of Ypsonas Cyprus, represented by Venner Shipley LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Daniel Bruno of Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name <fxprobitcoin.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2017. On August 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. On September 7, 2017, email communications sent by the Administrative, Billing and Technical contact of the disputed domain name were received by the Center. On September 14, 2017, the Respondent filed a request for extension to file a Response. On September 18, 2017, the Complainant sent an email communication to the Center not supporting the Respondent’s request for extension to file a Response. On September 19, 2017, in accordance with paragraph 5(b) of the Rules, the Center extended the Response due date to September 29, 2017. On September 20, 2017, the Respondent sent an email communication to the Center. The Response was filed with the Center on September 29, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 13, 2017. 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 was incorporated in 2006 and began trading under its name in 2007. It provides foreign exchange and other financial services, including arranging CFDs (or Contracts for Difference). The Complainant, however, does not provide services in relation to Bitcoin or other “cryptocurrencies”. According to the Complaint, it is now providing its services in over 150 countries through 20 languages. Also according to the Complaint, in 2014 its website at “www.fxpro.com” received over 8 million visits from around the world. In 2015, its website received over 10.5 million visits.
The Complainant has promoted its services by reference to its trademarks extensively. The promotional activities include sponsorship of the BMW Sauber Formula 1 team in 2009, sponsorship of the World Rally Championship in 2009, sponsorship of the Aston Villa and Fulham football clubs in the English Premier League in 2010, sponsorship of the Virgin Formula 1 racing team and AS Monaco Football Club in the French League in 2011 and of the Monaco Yacht club and the Monte Carlo annual Volley Ball Tournament from 2012 onwards. The Complainant was also the naming rights partner of the Australian Conference of the Super Rugby tournament from 2011 to 2015 and is currently the official main sponsor of the Watford football club in the English Premier League. Illustrations included in Annex 33 to the Complaint show “FxPro” being used prominently in relation to some of these sponsorships.
The Complaint identifies the Complainant and its UK subsidiary as having received a number of awards or accolades including:
- being named “Best Forex Broker 2008” by CEO Magazine;
- being named “Best Forex Broker 2009” by World Finance Magazine,
- being named “Fastest Growing Global Forex Broker 2010” by World Finance Magazine,
- being named “Best Global Trading Platform 2010” by World Finance Magazine
- the “Financial Times Investor Chronicle Award - FX Provider of the Year” in 2011
- being voted Best Global ECN Broker 2012 in the World Finance Foreign Exchange Awards;
- winning the “Forex Provider of Year” award in the UK Forex Awards of 2015
- winning the Best Forex Broker 2015 in the Forex Awards
- being voted Best Execution Broker and Best Forex Broker in the 2016 Forex Awards
- being voted Best FX Broker in the 2017 Shares Awards;
- being voted Best FX Provider in both the 2016 and 2017 Online Personal Wealth Awards;being voted Best FX Execution, Global in the 2017 CFI.co Awards;
- being voted Best Execution Broker, Global in the 2017 Global Brands Magazine
The Complaint also provides evidence that the Complainant has registered numerous trademarks in many countries around the world for “FxPro” or “FXPRO”. Amongst others, these include:
(a) EUTM No. 006460349 for FXPRO in respect of Insurance; financial affairs; monetary affairs; real estate affairs and registered on October 3, 2008;
(b) International Registration No. 1048297 for “FxPro” in respect of financial services delivered via the Internet, and registered on April 26, 2010 which extends to numerous countries including the People’s Republic of China, Egypt, Georgia, Ghana, Curaçao, Iran (Islamic Republic of), Kenya, Kyrgyzstan, Lesotho, Liberia, Liechtenstein, Madagascar, Mongolia, Morocco, Mozambique, Namibia, Oman, Democratic People’s Republic of Korea, Romania, Russian Federation, Sierra Leone, Sudan, Swaziland, Syrian Arab Republic, Turkey, Turkmenistan, Ukraine, Uzbekistan and Zambia;
(c) United States Trademark No. 5,234,067 for FXPRO registered in respect of Brokerage of shares or stocks and other securities; commodity brokerage; financial portfolio management; management of securities portfolios; financial investment brokerage; foreign exchange brokerage; agencies or brokerage for trading of securities, securities index futures and securities options; financial and investment services, namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; brokerage for trading of ores and industrial and precious metals; brokerage for trading of energy, namely, oil, gas, electricity, coal, nuclear fuel and bio fuel; financial services, namely, providing for the exchange of commodities, financial derivatives, interest rate products, and equities via the Internet and intranet systems. The application was filed on November 18, 2015 but, as the Respondent points out, it is registered only on the Supplemental Register; and
(d) United States Trademark No. 5,319,299 for a stylized version of “FxPRO Trade Like a Professional” in red and white. This trademark is registered in the Principal Register, but “FX PRO”, apart from the mark as shown is disclaimed. This trademark derives from International Registration No. 1317284.
The Respondent has been offering foreign exchange currency services under the name First National Innovation Brokers since 2011. In about 2013, it became the first foreign currency exchange trader to accept bitcoins. According to the Response, it now accepts over 800 cryptocurrencies, including Swiftcoin which the Response says the Respondent developed.
According to the Response, at some point First National Innovation Brokers was reorganized to become FxProBitcoin. The Response does not make clear when this reorganization took place. It is clear from annexes to the Response that the entity was still known as First National Innovation Brokers in 2014. The printout from “www.DigitalCashPalace.com” dated September 28, 2017 and included in the Response shows the entity’s name as First National Innovation Brokers Ltd still.
The Respondent registered the disputed domain name on August 9, 2015. According to the website to which the disputed domain name currently resolves:
“FX Pro BITcoin offers quality forex trading services in more than 100 countries around the globe.”
The Respondent’s website does include a disclaimer on the landing page:
“Fxprobitcoin.com has no affiliation with FxPro and FxPro Financial Services”.
5 Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above. As the Complainant contends, it appears that the Complainant has been using its trademark sufficiently prominently and extensively that it is likely to have rights in “FxPRO” at common law through passing off and similar actions in at least the United Kingdom.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the Top-Level Domain, the Complainant’s trademarks for “FxPRO” and “FXPRO” are clearly and prominently visible in the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to those trademarks.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant contends that it has not authorised the Respondent to use the Complainant’s trademark and the Respondent is in no way connected or associated with the Complainant. The Complainant also points out that its trademarks (apart from those in the United States and Turkey) were registered at least five years before the Respondent registered the disputed domain name.
The Respondent does not dispute these matters. Instead, the Respondent points out that “FX”, “PRO” and “BITCOIN” are ordinary descriptive terms and argues that their use in combination does not change their character to become distinctive. The Respondent points to the rejection of the Complainant’s US trademark application for FXPRO and the requirement for a disclaimer of “FxPRO” in securing registration of US Trademark No. 5,319,299 in support of that position. The Respondent points out (which is not in dispute) that the Complainant does not offer its services in relation to, or accept, bitcoins.
The Panel also notes that the Complainant has not claimed trademark rights specifically in New Zealand, where the Respondent’s corporate entity appears to be based, or Argentina, where the Respondent personally appears to have an address.
As noted above in section 4, however, the Respondent’s activities are not limited just to the United States, New Zealand or Argentina. The Respondent’s website makes it plain it is offering its services in over 100 countries around the globe.
Also, as noted in section 4 above, the Complainant has registered its trademarks in a very large number of countries. No precise comparison of the countries in which the Respondent is operating and those where the Complainant’s trademarks are registered is possible on the record in this case. The Panel does note, however, that the Complainant’s registrations are very extensive and in many countries where there are people and businesses likely to be seeking to take advantage of the services of the kind the Respondent is offering. Moreover, the Respondent’s services appear to be available to anyone anywhere with access to the Internet.
Further, the Respondent is actually engaging in the provision of “forex” services over the Internet, the very services provided by the Complainant and covered by the Complainant’s trademark registrations. The fact that the Complainant does not accept bitcoin in relation to those services is a difference, but does not change the fact that the Respondent’s services fall squarely within the scope of the Complainant’s rights.
Finally, it is plain that the Respondent was fully aware of the Complainant and its use of “FXPRO” long before he registered the disputed domain name. Thus, on May 22, 2012, the Respondent published an article entitled “FNIB: A Market Strategy” in which he stated “The market is currently dominated by FXCM.com and FXPRO.com”; the latter website being the website through which the Complainant provides services under its trademarks.
In these circumstances, the Panel finds that the Respondent does not have rights or legitimate interests under the Policy. The Policy seeks to regulate the registration and use of domain names in the interests of protecting trademark owners all round the world. The Internet is global in nature in the sense that in the ordinary course anyone with an Internet connection can contact or access any other location with an address on the Internet. Here, the Respondent has not sought to confine his activities to some local part of the world where the Complainant may not have rights. On the contrary, the Respondent is actively seeking to conduct business throughout the world from the disputed domain name in the same field as the Complainant. Moreover, the Respondent is doing so with full knowledge of the Complainant before adopting the disputed domain name. The Panel does not consider it is legitimate under the Policy for the Respondent to use what may be a right to use the Complainant’s trademark in a particular local jurisdiction to use the Complainant’s trademark in other jurisdictions where the Complainant does in fact have trademarks.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent denies registration and use in bad faith; advancing its arguments about the descriptive nature of the terms in the disputed domain name and contending that the Complainant has not shown any evidence of confusion. In that connection, the Respondent relies on the claimed descriptiveness of the Complainant’s trademark, the differences between the Complainant’s trademark and the disputed domain name and the fact that the Complainant does not trade in bitcoins while the Respondent does. Finally, the Respondent argues that the Complainant has been objecting to the Respondent’s use of the disputed domain name since early 2016 and so laches now bars the Complaint.
It is well established under the Policy that delay, or the passage of time, does not bar a complaint: WIPO Overview 3.0 section 4.7. In any event, the fact that the Complainant has been objecting to the Respondent’s use of the disputed domain name since early 2016 and the Respondent commenced using the disputed domain name only in 2015 provides no basis for a finding of laches. The Respondent has not advanced any evidence of any communication from the Complainant which would, or had a tendency to, induce the Respondent to believe that the Complainant had acquiesced in the Respondent’s conduct or to encourage the Respondent to continue to invest in use of the disputed domain name.
Even if the Panel were to accept for the purposes of the proceeding that the term “FXPRO” is descriptive of the relevant services in the United States, that does not assist the Respondent in this case. First, the Respondent’s activities are not confined just to the United States. As already discussed, the Respondent’s business is operating in over 100 other countries and is apparently willing to accept custom from any country. Secondly, as already indicated in section 4 above, the Complainant has numerous registrations for its trademarks in many other countries. Prima facie, the Respondent’s activities in the jurisdictions where those trademarks are registered appears to be an infringement. The facts that the Respondent accepts bitcoin and other cryptocurrencies while the Complainant does not, does not assist the Respondent in this case. As the Complainant points out, the Respondent promotes his business as a “Forex broker” and offers services in relation to CFDs. All of which falls directly within the scope of the Complainant’s registrations.
Thirdly, as noted in section 5(b) above, it is clear on the record in this proceeding that the Respondent well knew of the Complainant and its trademark when the Respondent registered the disputed domain name. On the record in this proceeding, it appears clear that the Respondent registered the disputed domain name and has been using it with knowledge that the Complainant was already using its trademarks in places where the Respondent sought to provide his business’ services. It appears therefore that he did so with knowledge of the Complainant’s rights or recklessly indifferent to those rights. At the least, the Respondent appears to have formed a view about whether the Complainant’s rights were valid or enforceable and decided nonetheless to proceed in the face of those rights. Such a course of conduct, with knowledge of the Complainant’s incumbency and in the face of that incumbency, cannot be considered to be good faith under the Policy. In these circumstances, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under 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 disputed domain name <fxprobitcoin.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: November 4, 2017