WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Finextra Research Limited v. Registration Private, Domains By Proxy, LLC / Linda Joseph

Case No. D2019-1125

1. The Parties

The Complainant is Finextra Research Limited, United Kingdom, represented by Osborne Clarke, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Linda Joseph, United States.

2. The Domain Name and Registrar

The disputed domain name <finextracap.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 May 15, 2019. On May 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2019, 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 May 20, 2019 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 May 24, 2019.

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 June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2019.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 8, 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, Finextra Research Limited, is a worldwide independent newswire and information source in technology for finance, operating under the name “Finextra”. The Complainant publishes online news, research articles, white papers and case studies, covering all significant technology in both wholesale and retail banking, capital markets and insurance areas. This includes coverage of cryptocurrencies and related technologies.

The Complainant has proven to be the owner of the FINEXTRA trademark and the associated device mark for FINEXTRA, which enjoys protection through several registrations.

The Complainant is inter alia the owner of European Union Trade Mark registration No. 16961724 for FINEXTRA (device), filed on July 6, 2017, and registered on March 20, 2018 in classes: 9, 16, 35, 36, 38, 41, 42; and United States trademark registration no. 5672628 for FINEXTRA (device) filed on January 4, 2018 and registered on February 12, 2019, with a priority date of July 6, 2017.

The Complainant uses <finextra.com> as the principal domain name for its website.

The disputed domain name was registered on August 13, 2018, and resolves to an active website displaying the Complainant’s logo and related services.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

The Complainant emphasizes:

- that the Complainant’s official website “www.finextra.com” is visited by some 425,000 professionals operating in the financial technology arena each month, and it has accrued a strong reputation and significant goodwill for its services under the FINEXTRA trademark within the finance industry.

- that the Respondent, save for the addition of the descriptive term “capital”, has used an identical logo to the Complainant’s registrations on its webpage and on its Finextracap Facebook page;

- that an earlier version of the website at the disputed domain name included the Complainant’s UK postal address on the footer of the homepage;

- that the disputed domain name is not being used in relation to a legitimate business and is instead using the Complainant’s logo and marketing videos to superficially give the impression that they are operating a genuine business;

- that the disputed domain name has been set up in bad faith, with the intention of creating a false impression as to the real nature of the business behind the website at the disputed domain name and/or using the Complainant’s name and Finextra registrations to attract, for commercial gain, users of the Complainant to the Respondent’s webpage by implying a false affiliation with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain name is 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 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 established rights in the FINEXTRA trademark.

The disputed domain name <finextracap.com> consists of the mark FINEXTRA, with the simple addition of the term “cap” (presumably an abbreviation of the word “capital”).

The addition of the term “cap” does not avoid confusing similarity with the FINEXTRA trademark.

In fact, it has already been held by previous UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between a domain name and a complainant’s trademark. Indeed, the Complainant’s trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark FINEXTRA in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions to claim any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the FINEXTRA mark when the Respondent registered the disputed domain name, and that the disputed domain name was registered and has been used in bad faith.

In fact, the Complainant’s trademark enjoys a widespread reputation and a high degree of recognition within the finance industry.

Therefore, the Panel finds that the Respondent knew of the Complainant’s mark and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name.

The Panel, in the absence of evidence to the contrary, agrees with the Complainant’s opinion that the disputed domain name has been set up in bad faith, with the intention of creating a false impression as to the real nature of the business behind the website at the disputed domain name and/or using the Complainant’s name and Finextra registrations to attract, for commercial gain, users of the Complainant to the Respondent’s webpage by implying a false affiliation with the Complainant.

Finally, the Respondent has not replied to the Complainant’s claims brought in this proceeding. Indeed, owing to the fact that the Respondent has not responded to, let alone denied, the submitted assertions and evidence of bad faith made by the Complainant in this proceeding, the Panel finds bad faith on the part of the Respondent. The Panel finds that had the Respondent had legitimate purposes for registering and using the disputed domain name then the Respondent would have responded to these assertions.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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, <finextracap.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: July 16, 2019