WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FXDirectDealer, LLC v. Mohammed Yasser
Case No. D2019-0560
1. The Parties
The Complainant is FX Direct Dealer, LLC of Jersey City, New Jersey, United States of America, (“United States”), represented by Kolitch Romano LLP, United States.
The Respondent is Mohammed Yasser of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <fxdtrading.com> is registered with Launchpad.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2019, 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 March 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Center received an email communication from a third party on March 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on April 18, 2019. 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 a financial services company with a head office located in the United States. It provides its goods and services, in multiple jurisdictions, to individual and institutional traders hedge funds, commercial entities, brokerage firms and money managers.
Since, at least, early 2002 the Complainant has been using the mark FXDD in connection with its goods and services. It has many trade mark registrations, in the United States and elsewhere, which protect this trading style. These include, by way of example only;
- United States trade mark number 4,418,706 for the word mark FXDD, registered on October 15, 2013, in international classes 9, 36 (which includes “financial services via a global communications network, namely, foreign exchange trading and options brokering”), and 41;
- United Arab Emirates trade mark, registration number 165626, for FXDD plus device, registered on March 31, 2014, in international class 36, which includes “Stock exchange services; mutual fund management services; and any other related financial and financial services”.
The Complainant has also registered FXDD in conjunction with other words which allude to its goods and services, such as FXDD FRONTIER INSTITUTIONAL SERVICES and FXDDCLOUD.
The Complainant promotes its goods and services through websites located at “www.fxdd.com” and “www.fxddtrading.com”. The home page of this second website is branded as FXDD TRADING. The Complainant has produced, amongst other variants, an Arabic language version of this website.
The disputed domain name was registered on August 5, 2018. As at March 2019, the disputed domain name resolved to a website, the home page of which features a photograph of two men in an office setting shaking hands. Placed over this image is a prominent banner for “FXDTRADING”, beneath which appears text in Arabic script. A machine translation provided by the Complainant indicates that this text translates as “International Stock Exchange”. Towards the base of the page is a news ticker showing current commodity prices and exchange rates. Underneath that is additional text in Arabic which, according to the machine translation, reads as: “A team specializing in the management of portfolios of currency, metals and currencies, in addition to some shares of international companies”.
5. Parties’ Contentions
The Complainant draws attention to its extensive portfolio of FXDD trade marks, full details of two of these marks being set out above. It says that the disputed domain name is identical or confusingly similar to its FXDD trade marks. The misspelling of FXDD by the omission of the second “D” does not serve to distinguish the disputed domain name from its trade marks. Moreover, the disputed domain name is virtually identical to the Complainant’s domain name <fxddtrading.com> and the Complainant’s FXDD TRADING branding. Furthermore, the addition of the term “trading” to the term “fxd” does not prevent the disputed domain name from being confusingly similar to the Complainant’s FXDD marks because “trading” simply describes the Complainant’s goods and services.
The Complainant also asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent is not sponsored by, or affiliated with the Complainant. The Respondent has not received any license, authorization or permission from the Complainant to use its FXDD marks in any manner, including in domain names. To the best of the Complainant’s knowledge, the Respondent is not known by the disputed domain name, nor by any name that incorporates the letters FXD or FXDD, nor can it claim any legitimate noncommercial or fair use rights in the disputed domain name.
The Respondent’s use of the disputed domain name appears to be primarily for the purpose of disrupting and diverting the business of the Complainant and not for any bona fide offering of goods and services. By way of example, the Respondent has adopted a white, upper case font for its “fxdtrading” name which is similar to that used by the Complainant. Moreover, the Respondent appears to be offering goods and services which are the same as, or which are related to, those that the Complainant offers, including foreign exchange trading and education services. However, no identifying information about the entity which purports to offer the goods and services described on the Respondent’s website is provided and the contact telephone number on the website appears to be fake. Furthermore, the images on the Respondent’s website, including that which features on the home page, are the same as those which can be found on a number of website templates which are offered for sale. Accordingly, it appears that the Respondent is attempting to create the façade of a website but is not actually using the disputed domain name in connection with a bona fide offering of goods and services. The purpose of the website appears to be to capitalize, for commercial gain, on the reputation and goodwill associated with the Complainant’s FXDD marks.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant relies on its submissions concerning the Respondent’s bad faith, as summarized above. In addition, the Respondent knew, or should have known, of the Complainant and its FXDD marks when the Respondent registered the disputed domain name. The fact that the Respondent chose to register a domain name, which is a misspelling of the Complainant’s FXDD mark and which is visually and phonetically similar to it, and is using the disputed domain name in connection with the same or related goods and services as those of the Complainant, reinforces this view.
In addition, the Respondent is intentionally attempting to attract Internet users to the website to which the disputed domain name resolves and to divert them from the Complainant’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and/or endorsement of the disputed domain name’s website for commercial gain. This falls within the circumstance of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy. In particular, the Respondent is relying on a consumer to mistype the Complainant’s FXDD marks or domain name and is attempting to profit from such confusion. As explained at section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its trade mark registrations for FXDD, including the marks in respect of which full details are set out above. The Complainant has asserted trade mark rights in FXDD TRADING although it has not provided any details of trade mark registrations for this trading style, nor any details as to the extent of its repute in it. Accordingly, the Panel considers this element of the Policy solely by reference to the Complainant’s FXDD trade marks.
In considering whether a domain name is identical or confusingly similar to a complainant’s trade marks, it is established that the applicable generic Top-Level Domain (“gTLD”) suffix, that is “.com” in the case of the disputed domain name, is disregarded under this element of the Policy as it is a technical requirement of registration.
There are two respects in which the disputed domain name differs from the Complainant’s registered trade marks for FXDD. First, in contrast with the two “d” in the Complainant’s mark, there is only one “d” in the disputed domain name. This variance does not prevent the disputed domain name from being considered confusingly similar. As explained at section 1.9 of the WIPO Overview 3.0; “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Second, the disputed domain name also includes the word “trading”. The issue is considered at section 1.8 of the WIPO Overview 3.0, which explains that: “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 Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The second and third circumstances are plainly inapplicable: there is no evidence before the Panel that the Respondent is commonly known by the disputed domain name, nor is the Respondent’s use of the disputed domain name noncommercial in character.
Whether the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services requires more detailed consideration. In this respect, whilst the Complainant has provided some web pages from the Respondent’s website, including machine translations, the Panel has considered it appropriate to obtain a more complete understanding of the website. The circumstances in which a panel might typically take this course are outlined at section 4.8 of the WIPO Overview 3.0: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has accordingly visited the website to which the disputed domain name resolves and clicked on some of the links. Whilst it has not obtained machine translations of any part of the website, it is evident that it is quite extensive and that the Respondent also has an account on Facebook (“FXD Trading Solutions”) as well as having had a Twitter account (currently suspended).
The indicators which suggest that the Respondent’s website comprises some indicia of a bona fide offer of goods and services are the following. First, “fx” is very widely used as a shorthand for “Foreign Exchange” and “FXD” is an acronym apparently used in the financial services industry for terms such as “Foreign Exchange Digital”, “Foreign Exchange Derivatives” or “Foreign Exchange Dealing”. So, it is at least possible that the use by the Respondent of both the disputed domain name and the expression “fxdtrading” are for reasons unconnected with the Complainant’s business. Second, the appearance of the Respondent’s website is different to the Complainant’s website. Moreover, its use of “fxdtrading” is in white font on a dark background. The Complainant’s use of “FXDD” on both its websites (contrary to the assertions made in the Complaint) is predominantly in black font on a white background with the word “trading” on its website at “www.fxddtrading.com”, appearing in red font. The fact that both parties use an upper case font is of no significance; this is entirely usual with acronyms. Third, it is evident from the Panel’s inspection of the Respondent’s website and its Facebook account that the compilation of its website, including features such as a news ticker, has been the product of effort and investment. This does not preclude the website being a sham but, arguably, makes it less likely. Fourth, beyond referencing a single article in an online publication entitled “FXD-Arabic FX News”, which contains what appears to be a directory entry outlining the services the Complainant provides in Arabic-speaking countries, the Complainant has not provided details of any particular reputation it has acquired in the United Arab Emirates, nor in other Arabic speaking countries, nor any indications of the level of business it conducts in them.
The following factors point against the Respondent. First, there are significant similarities between the Respondent’s website and a number of other websites to which the Complainant has drawn attention and which have been described by it as “mock websites or templates having nonsense words or fake locations”. For the sake of completeness, it should be noted that most of the websites appear to be derived from a bona fide established online platform on which designers can showcase and discover creative work. So the explanation for this is not necessarily sinister. Second, the Respondent has used a contact telephone number on its website which, whilst not exactly the same as the telephone numbers which feature on the other website designs provided by the Complainant, is sufficiently close that it has evidently been derived from it. There is no indication as to which country or region the number is intended to relate. It does not have any resemblance to telephone codes used in the United Arab Emirates and, according to the Complainant, it does not work. Third, whilst the Complainant has not submitted copies of the entirety of the Respondent’s website, in original and/or as machine translations, it has asserted that the website does not contain any information about the Respondent or the apparent entity offering goods and services including the entity’s location, contact information licensing or registration information. This claim has not been challenged by the Respondent. Fourth, the Respondent’s Facebook account (which has a total of 34 likes and 34 follows) is in the name of “FXD Trading Solutions”. In other words, the name of the entity being promoted on Facebook does not exactly mirror either the disputed domain name nor the trading style of the website to which it resolves. Fifth, whilst the Complainant has not provided details of the extent of its business in the United Arab Emirates, it has evidently considered the market of sufficient importance to have registered several FXDD trade marks in it and to have developed an Arabic language section of its website at “www.fxddtrading.com”. It would be surprising if the Respondent had been unaware of the activities of a competitor operating in the same relatively discrete sub-set of the financial services sector and in the same geographic area. The final factor pointing against the Respondent is that it has chosen not to reply to the Complaint.
It is evident from the above that the position is finely balanced. By a fairly narrow margin, the Panel concludes that the Respondent’s website does not comprise a bona fide offering of goods and services. Of the many factors which go into the mix, the Panel finds the following to be of particular significance. First, it is particularly odd that a website which purports to be live and fully functioning should prominently feature on its home page a telephone number, evidently derived from dummy or specimen websites, which does not work and which has no apparent connection to the country in which the Respondent is based. Second, the fact that the name of the Respondent’s Facebook account does not correspond exactly with the disputed domain name points to some targeting by the Respondent of the Complainant’s FXDD TRADING brand; why else have a Facebook account called “FXD Trading Solutions” but a domain name and website called “FXD Trading”? Third, whilst a respondent’s failure to reply to a complaint is not always of special significance, the failure of the Respondent to reply to the Complainant’s detailed assertions as to why its website should be considered to be a sham, points to an unwillingness or inability on its part to provide a credible response.
The Complainant has therefore made out a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Accordingly, the burden of production shifts to the Respondent. The failure of the Respondent to reply to the Complaint leads the Panel to conclude that the Complainant has satisfied the second element of the Policy and that the the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In the light of the Panel’s findings under the second element of the Policy the issues arising in respect of the third element of the Policy can be dealt with briefly.
The disputed domain name was registered relatively recently and the strong probability is that it was registered in order to point to the website to which it presently resolves. At least some Internet users familiar with the Complainant who mistakenly type the disputed domain name into the address bar of their browser and are taken to the Respondent’s website are likely to assume that they have found the Arabic language version of the Complainant’s website.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The circumstance set out at paragraph 4(b)(iii) of the Policy is if a respondent has registered the domain name for the purpose of disrupting the business of a competitor.
The precise motivation of the Respondent in registering the disputed domain name and pointing it to a website which purports to be genuine, but which the Panel has concluded, on a balance of probabilities, to be a sham, is unclear. It is arguable that the Respondent’s conduct does not fall precisely within either of the circumstances outlined above. However, the examples of bad faith registration and use set out at paragraph 4(b) are without limitation. The Panel is satisfied that, in registering a domain name which is confusingly similar to the Complainant’s FXDD trade mark, and using it to point to a dummy website which purports to provide services substantially similar to those of the Complainant, the Respondent has been acting in bad faith.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith.
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 <fxdtrading.com> be transferred to the Complainant.
Date: May 2, 2019