WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXDirectDealer, LLC v. FH LF

Case No. D2018-2304

1. The Parties

The Complainant is FXDirectDealer, LLC of New York, New York, United States of America (“U.S.”), represented by Kolitch Romano LLP, United States.

The Respondent is FH LF of British Virgin Islands, Overseas Territories of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <fxddcd.com> and <fxddcg.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2018, the Registrar transmitted by email to the Center its verification response 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 October 19, 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 amendment to the Complaint on October 23, 2018.

The Center verified that the Complaint together with the amendment to 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 October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.

The Center appointed Edoardo Fano as the sole panelist in this matter on November 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is FXDirectDealer, LLC, a U.S. financial services company operating from 2002 all over the world, owning many trademark registrations for FXDD, including:

- U.S. Trademark Registration No. 4,418,706 FXDD, registered on October 15, 2013;

- International Trademark Registration No. 1,175,697 FXDD, registered on August 7, 2013.

The Complainant is operating on the Internet at the website “www.fxdd.com”.

The Complainant provided evidence in support of the above.

The disputed domain names <fxddcg.com> and <fxddcd.com> were registered on June 25, 2018 and September 1, 2018 respectively.

At the time of filing the Complaint, the disputed domain names <fxddcg.com> and <fxddcd.com> redirected to websites in which financial services were offered by a supposed Australian company called FXDD Capital Group and the stylized FXDD trademark and design of the Complainant was reproduced.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <fxddcg.com> and <fxddcd.com> are confusingly similar to its trademark FXDD.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them, nor is the Respondent commonly known by the disputed domain names.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark FXDD is well-known in the field of financial services and the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and is using them to mislead consumers for its commercial gain, by advertising and offering financial services at the relevant websites, in order to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark FXDD, both by registration and by acquired reputation and that the disputed domain names <fxddcg.com> and <fxddcd.com> are confusingly similar to the trademark FXDD.

The Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and a complainant’s trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letters “cg” and “cd”, commonly used in the financial field as acronyms of “capital group” and “certificate of deposit” respectively, do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. Rather, the disputed domain names led Internet users to websites where financial services are offered and the stylized trademark and design of the Complainant is reproduced, creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.

As regards to the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark FXDD all over the world in the field of financial services is clearly established and the Panel finds that the Respondent knew or must have known of the Complainant’s trademark, especially because the content of the websites where the disputed domain names are redirected consists of advertising and selling financial services by reproducing the stylized trademark and design of the Complainant.

As far as the use in bad faith is concerned, the Panel notes that, at the time of filing the Complaint , the disputed domain names pointed to websites where financial services are offered, supposedly by an Australian company called FDXX Capital Group Pty Ltd, and where the stylized trademark and design of the Complainant’s is reproduced. The websites to which the disputed domain names were redirected also make reference to another Australian company operating in the financial field, Aetos Capital Group, and their layout and pictures are very similar if not identical to the layout and pictures that appears in the Aetos’ website, at the address “www.aetoscg.com”.

The Panel therefore notes that the Respondent is also using it in bad faith, trying to attract Internet users to its websites by creating likelihood of confusion with the Complainant’s trademark FXDD in order to provide financial services, an activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <fxddcg.com> and <fxddcd.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 7, 2018