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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FxPro Financial Services Ltd v. FxProLondon

Case No. D2018-1603

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 ("UK").

The Respondent is FxProLondon of London, UK, self‑represented.

2. The Domain Name and Registrar

The disputed domain name <fxprolondon.com> 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 July 16, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2018, 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 July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Center received six informal email communications from the Respondent on August 5 and 6, 2018. The Center informed the Parties of the commencement of Panel appointment process on August 13, 2018.

The Center appointed Alistair Payne as the sole panelist in this matter on August 23, 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

The Complainant is an international exchange and financial services provider based in Cyprus that began trading under the FxPro name or mark in 2007 and now serves clients in 150 countries through its website at the domain name <fxpro.com> which was registered in 2002 and is available in 20 languages. The Complainant's sister company FXPRO UK Limited's domain name <fxpro.co.uk> was registered in May 2008 and its business there and through the website at that domain name has operated since 2010. The Complainant owns numerous trade mark registrations worldwide for FXPRO and in particular European Union trade mark 006460349.

The disputed domain name was registered on December 1, 2017, and resolves to a website also offering international exchange and financial services.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name wholly incorporates its FXPRO trade mark and that the addition of the geographic name "London" does not distinguish the disputed domain name and therefore the disputed domain name is confusingly similar to its FXPRO registered trade mark.

It says further that the Respondent has no registered rights in the FXPRO name or the FXPROLONDON name. It submits that the Complainant has not authorised, licensed or consented to the Respondent's use of its trade mark FXPRO into the disputed domain name.

The Complainant notes that its website at "www.fxpro.com" received 8 million visits worldwide in 2014 and that in 2015 it received over 10.5 million visits. It says that its business has won more than 50 awards and accolades and that it has spent significant amounts of money in promotional activity of the FXPRO name and brand, including by sponsoring numerous international sporting tournaments and clubs. The Complainant submits that as a result of these activities it has developed a very significant goodwill and reputation attaching to its name and mark, in particular in the UK.

The Complainant submits that the Respondent in using the disputed domain name and the website to which it resolves is trading on the goodwill and reputation attaching to the Complainant's FXPRO name and mark. It says that the disputed domain name was registered long after it first used its mark and by its time of registration that the Complainant's mark was already very well reputed in the UK and elsewhere.

The Complainant notes that the website to which the disputed domain name resolves mimics the Complainant's website using very similar get-up and a significant amount of copied content. It says that the Respondent's website at the disputed domain name represents that the Respondent was voted "best FX Broker 2017" when it was in fact the Complainant who won this accolade. The Complainant also notes that the Respondent's website uses its distinctive bull device and makes various claims about "FxProLondon" being the holding company of various of the Complainant's group companies when this is clearly incorrect. A further example of copying from the Complainant's website, submits the Complainant, is the Respondent's claim that it has won more than 50 UK and international awards and then includes a list of awards that were won by the Complainant. This is all indicative, says the Complainant, of the Respondent seeking to trade off its goodwill and reputation using the disputed domain name to divert Internet users to the Respondent's website where it creates confusion for Internet users by representing that the Respondent is the Complainant, or has some affiliation with the Complainant when this is not the case and does so for its own financial benefit. This says the Complainant amounts to evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent submitted no formal response but sent an email to the Center on August 5, 2018 as follows:

"We are a site design and programming company. I was amazed to find that the design offered to our client was quite similar to another site, the site has not yet entered the activity and has not yet been published. The site is currently completely different although it has not yet been officially launched".

On August 6, 2018 this was followed by another email to the Center upon the behalf of the Respondent as follows:

"Our site has not violated the law, and does not concern your site. There is no reason to initiate proceedings against us. First of all, you need to give a detailed explanation of what you say and about the violation that you have planted".

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns European Union word mark registration 006460349 for its FXPRO mark. The disputed domain name wholly incorporates the Complainant's FXPRO mark together with the geographical name "London".

The disputed domain name wholly contains the Complainant's FXPRO mark and is confusingly similar on a "side by side" analysis. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The additional element of the disputed domain name, namely the geographical name "London", does not distinguish the disputed domain name from the mark and does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements". As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's FXPRO mark and that the Complaint therefore succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no registered rights in the FXPRO name or in the FXPROLONDON name. It says further that it has not authorised, licensed or consented to the Respondent's use of its FXPRO trade mark in the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case and notes that the Respondent has no rights or legitimate interests in the disputed domain name and that in its email responses to the Center the Respondent has completely failed to rebut the Complainant's case under this part of the Policy. As a result and also for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in December 2017, many years after the Complainant first used and registered the FXPRO mark. The Complainant has provided evidence that indicates that by that time the Complainant's mark and business had developed a very considerable goodwill and reputation, in particular in the UK, where the Respondent is based. In these circumstances and also for the reasons described below, the Panel finds it more likely than not that the Respondent was well aware of the Complainant's FXPRO mark and business at the time of registration of the disputed domain name.

Under paragraph 4(b)(iv) of the Policy there is deemed evidence of registration and use of a domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The Respondent in this case has obviously used the disputed domain name with a view to confusing Internet users into thinking that they are reaching the Complainant's or some associated website. The respective websites are similar in many ways. The Respondent's website has copied elements of get‑up such as the Complainant's horned bull's head device, represents that it is the holding company of various of the Complainant's group companies when this is not the case, lists a significant number of awards and accolades won by the Complainant as if these had been awarded to the Respondent and overall seeks to confuse Internet users into thinking that the Respondent's website at the disputed domain name has some affiliation or connection with the Complainant when this is not the case.

The Respondent appears to be blatantly trading off the goodwill and reputation attaching to the Complainant's FXPRO mark in bad faith and it appears to be doing so for commercial purposes. The Panel's view of the Respondent's conduct is only confirmed further by the fact that the Respondent represents that it is UK regulated when according to the search of the UK Financial Services Register carried out by the Complainant, it is not. This is exactly the sort of conduct in bad faith that the Policy aims to proscribe and the Panel finds that the Respondent's conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the Complaint also succeeds under the third element of the Policy.

7. Decision

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 <fxprolondon.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 5, 2018

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