WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oanda Corporation v. WhoisGuard, Inc., WhoisGuard Protected / "Joseph Blatter"
Case No. D2018-1827
1. The Parties
The Complainant is Oanda Corporation of New York, New York, United States of America ("United States"), represented by Faegre Baker Daniels LLP, United States.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / "Joseph Blatter" of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <oandaxmtrade.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 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 the Complainant on August 16, 2018 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 August 20, 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 the Respondent of the Complaint, and the proceedings commenced on August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on September 19, 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, based in the United States, operates a currency exchange and investment and financial information service and began using its OANDA mark in connection with this business in June 1996. The Complainant's OANDA mark was registered as a United States trade mark under number 2874938 on August 17, 2004, and it also owns trade mark registrations for this mark in numerous countries worldwide. The Complainant has since 1997 operated a website to promote its services at its domain name <oanda.com>.
The disputed domain name was registered on April 10, 2018 and resolves to a website that offers financial trading services.
5. Parties' Contentions
The Complainant submits that it owns registered rights in the OANDA mark as set out above and that its mark is wholly contained within the disputed domain name and therefore is confusingly similar to the Complainant's registered mark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name and that it has never given the Respondent permission to use the Complainant's marks. Firstly, it says that there is no evidence that the Respondent has been commonly known by the term "OANDA" or by the disputed domain name. Secondly, the Complainant notes that the website to which the disputed domain name resolves is an online financial trading platform and that it exacerbates confusion by its unauthorized use of the Complainant's OANDA mark and logo. Thirdly, the Complainant asserts that the Respondent owns an identical webpage at "www.binarytradepro.com" that uses the same online financial trading platform under another mark, BINARYTRADEPRO, and that it is using the website at the disputed domain name together with the Complainant's marks on the same platform effectively as an imposter webpage. Finally, the Complainant says that the Respondent alleges that its platform has been approved by the Forex Regulation which is monitored by the National Futures Association. However, there is no record of the Respondent (or the entity listed as the owner – Oanda XM Trade) being listed as a regulated entity on the National Futures Association's website.
The Complainant submits that it began use of its OANDA mark in 1996 long before the Respondent registered the disputed domain name and has made substantial use of it including on the Internet since that time. It says that the Respondent must have been aware of its mark when it registered the disputed domain name and that in the circumstances, as described above, the Respondent has used the disputed domain name to resolve to an imposter website in order to trade of the goodwill and reputation attaching to the Complainant's OANDA mark for its own commercial gain and that this amounts to evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its OANDA mark, in particular in the United States under trade mark registration number 2874938 registered on August 17, 2004. The disputed domain name wholly contains the Complainant's mark together with the addition of the letters "xm" and the word "trade". Under section 1.8 of the WIPO Overview Of WIPO Panel Views On Selected UDRP Questions, Third Edition, the consensus approach taken by panels is noted as follows: "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". As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's OANDA 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 rights or legitimate interests in the disputed domain name and that the Complainant has never given the Respondent permission to use the Complainant's marks. It says that there is no evidence that the Respondent has been commonly known by the term "OANDA" or by the disputed domain name and that the Respondent is using the disputed domain name to trade off the reputation or goodwill attaching to the Complainant's mark by diverting Internet users to the Respondent's own financial services trading platform and that this is not bona fide or legitimate conduct.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not responded and has failed to rebut this case. Accordingly, the Panel finds for this reason and for the reasons described under Part 6C below that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant first used its OANDA trade mark in 1996 and its domain name <oanda.com> to resolve to its main website in 2007. The Complainant's United States registration of the OANDA mark dates from 2004. In the additional circumstances that the OANDA mark appears to be a coined term in relation to currency exchange and investment and financial information services, that the Complainant appears to have registered it in many countries and made long standing online use of the mark, then it seems to the Panel more likely than not that the Respondent must have been aware of the Complainant's OANDA mark when it registered the disputed domain name in 2018.
The disputed domain name resolves to a website that makes use of the Complainant's word mark OANDA and promotes financial trading services that are at least similar to the Complainant's services. It appears to the Panel that the Respondent is using the Complainant's OANDA mark without authority both in the disputed domain name and on the website to which it resolves, to confuse Internet users into thinking that the disputed domain name and the Respondent's website either belongs to the Complainant, or is in some way affiliated to it, or authorised by it, when this is not the case. Under paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website amounts to evidence of registration and use in bad faith. This is precisely what the Respondent appears to have done in this case and the Panel finds that the Complainant has made out its case in terms of paragraph 4(b)(iv) 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 <oandaxmtrade.com> be transferred to the Complainant.
Date: September 24, 2018