WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia
Case No. D2018-1111
1. The Parties
Complainant is FXCM Global Services LLC of New York, New York, United States of America ("United States" or "US"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK").
Respondent is WhoisGuard Protected, Whoisguard Inc. of Panama, Panama / Jenny Sohia of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <fxcm.press> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2018. On May 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, 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 Complainant on May 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 25, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 18, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 21, 2018. 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
Complainant was incorporated in the State of Delaware in 1999 and is one of the early developers of online forex trading. In 2003, Complainant expanded overseas when it opened an office in London which became regulated by the UK Financial Services Authority. Complainant also has additional offices located in Germany, Australia, France, Italy, Greece, China, and Japan, and affiliate offices in Canada, Israel, Chile and Lebanon. In 2010, Complainant entered the New York Stock Exchange and was the first forex broker in the US to issue stock to the public; Complainant's public offering lasted until 2016.
Complainant predominantly operates from its main website, located at "www.fxcm.com". Complainant has also registered several domain names that feature the FXCM brand name, including <fxcm.asia>, <fxcm.blog>, <fxcm.broker>, and <fxcm.capital>.
Complainant also owns registrations in a number of jurisdictions for the FXCM trademark, including US Reg. No. 2620953, registered on September 17, 2002, and US Reg. No. 3006018, registered on October 11, 2005 (collectively, the "FXCM Marks").
The disputed domain name, <fxcm.press>, was registered on December 9, 2017.
5. Parties' Contentions
Complainant asserts that it owns valid and enforceable rights in the FXCM Mark for use in connection with online foreign exchange trading, CFD trading, spread betting and associated services, and that Complainant acquired these rights prior to the date on which Respondent registered the disputed domain name.
Complainant contends that the disputed domain name is identical at the second-level to Complainant's FXCM Marks. According to Complainant, the only difference between the FXCM Marks and the disputed domain name is the addition of the generic Top-Level Domain ("gTLD") ".press." According to Complainant, the gTLD should be disregarded in determining confusing similarity between the FXCM Marks and the disputed domain name, and that the FXCM Marks and the disputed domain name are therefore identical and confusingly similar.
Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent owns no trademark registrations for the term "FXCM," Respondent has made no demonstrable preparations to use the disputed domain name in connection with any bona fide commercial use or legitimate noncommercial or fair use, which currently fails to resolve to any active website, and which previously resolved to one of Complainant's websites prior to Complainant sending a cease and desist letter to Respondent. Complainant asserts it has never given Respondent any permission to use the FXCM Marks for any purpose, nor is Respondent commonly known by the disputed domain name. Therefore, Complainant asserts it has made a prima facie showing that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Respondent registered the disputed domain name long after Complainant had registered its FXCM Marks. Complainant asserts that Respondent was aware of Complainant's rights in and to the "FXCM" term, as the content of the domain name used to resolve to a copycat version of the FXCM official website. As the disputed domain name is now inactive, Complainant also asserts it is now passively held. Complainant noted that the content of the disputed domain name changed after Complainant attempted to send Respondent a cease and desist letter, and that Respondent's WHOIS information was likely inaccurate and unverified causing the Registrar to suspend the disputed domain name, which also tend to support an inference of bad faith.
Accordingly, Complainant has requested that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Complainant has provided evidence that it has rights in the FXCM mark, which has been registered in the United States and elsewhere internationally, well before Respondent registered the disputed domain name.
With Complainant's rights in the FXCM mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which it is registered, in this case, ".press") is identical or confusingly similar to Complainant's mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is identical to Complainant's FXCM mark because it exactly matches the FXCM mark at the second-level. As noted above, the addition of the gTLD ".press" does not distinguish the disputed domain name from Complainant's mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the FXCM mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its FXCM mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to Complainant's own website, and currently fails to resolve to any content after the disputed domain name was suspended for Respondent's failure to verify its contact information.
Use of the disputed domain name to redirect Internet users to Complainant's own website cannot confer any rights or legitimate interest in the disputed domain name to Respondent. See, e.g., Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 ("Furthermore, panels have found that unauthorized redirection to Complainant's website does not serve as evidence of rights or legitimate interests. Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533.").
Respondent's later passive holding of the disputed domain name subsequent to the apparent suspension of the domain name by the Registrar for failure to verify contact details also fails to confer upon Respondent any rights or legitimate interests in the disputed domain name, as mere passive holding does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Given that Complainant has established with sufficient evidence that it owns rights in the FXCM mark and that Respondent was aware of such rights, and has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name, given Respondent's failure to produce countervailing evidence of any rights or legitimate interest in the disputed domain name, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a complainant's (or a competitor's) website is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 ("Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark: … redirecting the domain name to the complainant's (or a competitor's) website…."). A respondent redirecting a domain name to the complainant's website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 ("[T]he redirection from the disputed domain name to Complainant's official website reinforces the likelihood of confusion. Internet users are likely to consider the disputed domain name as in some way endorsed by or connected with Complainant, particularly taking into consideration the reputation of the Mark…UDRP panels have pointed out in previous redirection UDRP cases, that as long as the complainant does not itself control the disputed domain name, it could be redirected to an unauthorized site at any time.").
Passive holding may also be evidence of bad faith, depending on (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See WIPO Overview 3.0, section 3.3; see also, e.g., "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. Here, Complainant's mark is distinctive and well-known in its industry (albeit a four-letter name which might otherwise be valuable as a domain name even aside from its trademark significance), Respondent failed to provide any response or evidence of actual or contemplated good-faith use, Respondent concealed its identity through a proxy service and its registration was suspended for Respondent's failure to verify its underlying and apparently inaccurate contact information in violation of its registration agreement, and Respondent's use of the disputed domain name to redirect to Complainant's own website belies any intention to put the disputed domain name to any good faith use.
In this vein, Respondent's failure to provide accurate registration contact information and verify the same, further supports the inference of bad faith in this case.
In light of this activity, and given that Respondent registered the disputed domain name without Complainant's authorization long after Complainant's rights in this mark had been established, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name, <fxcm.press>, be transferred to Complainant.
Brian J. Winterfeldt
Date: July 12, 2018