WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FXCM Global Services, LLC v. Pei Gang He, He Pei Gang
Case No. D2020-1078
1. The Parties
The Complainant is FXCM Global Services, LLC, United States of America, represented by SafeNames Ltd., United Kingdom (“UK”).
The Respondent is Pei Gang He, He Pei Gang, Shan Xi, China.
2. The Domain Name and Registrar
The disputed domain name <chinese-fxcm.com> is registered with DanCue Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2020, 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 May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020.
The Center appointed Francine Tan as the sole panelist in this matter on June 18, 2020. 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 states that it was founded in 1999 in London, UK, and operates as a retail broker in the foreign exchange (“Forex”) market. It is a leading provider of online Forex trading and CFD (contract for difference) trading and related services. It provides global traders with innovative trading tools and training educators. It also offers educational courses on Forex trading.
The Complainant has offices across the world including in Germany, the UK, Australia, France, South Africa, and Hong Kong, China. It has won awards and accolades for its brokerage and trade-related services. It launched a 20th Anniversary Campaign in February, 2019. This involved organizing a variety of events and activities including workshops, trading seminars and educational seminars.
The Complainant is the registered proprietor of the mark FXCM in a number of jurisdictions including in the United States of America (Registration No. 2620953; registered September 17, 2002), the European Union (Registration No. 003955523; registered November 3, 2005) and Australia (Registration No. 1093998; registered December 3, 2004).
The Complainant states that a substantial amount of time, money and effort have been spent in promoting and using the FXCM trade mark in relation to its services, both domestically and internationally.
The Complainant owns domain name registrations which feature the FXCM trade mark including <fxcm.asia>, <fxcm.ba>, <fxcm.blog>, <fxcm.broker>, <fxcm.capital>, <fxcm.ceo>, <fxcm.co.uk> and <fxcm.co.dk>. The Complainant operates its main website at “www.fxcm.com”.
The disputed domain name was registered on January 17, 2020. It resolves to a page which appears to advertise and offer online gambling games and related services. The links on the webpage do not lead to any operable site.
A cease and desist letter was sent to the Respondent on April 6, 2020. A follow-up letter was sent on April 14, 2020. The Respondent did not reply on either occasion.
5. Parties’ Contentions
1. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. Apart from the Complainant’s over 15 subsisting trademark registrations, the Complainant’s FXCM mark has been well known in the industry by panelists in earlier UDRP cases (e.g., FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111).
The FXCM mark is clearly recognizable in the disputed domain name and is incorporated therein in its entirety. The addition of the word “Chinese” in the disputed domain name does not prevent a finding of bad faith, given that the Complainant also markets its services to Chinese-language speakers. The conjunction of “Chinese” with “FXCM” creates further confusion in the minds of Internet users.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not, to the best of the Complainant’s knowledge, registered any FXCM trade marks; the Respondent has not been licensed by the Complainant to use a domain name which features the FXCM trade mark; the Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name does not lead Internet users to any sites which provide goods and services; the Respondent is not known as FXCM nor Chinese-FXCM; the Respondent has no connection or affiliation with the Complainant; and the Respondent is not commonly known by the disputed domain name.
Additionally, the Respondent’s email address is associated with over 2,900 other active domain name registrations, some of which are “trademark-abusive to other brands”. These incorporate famous brand names such as CARTIER, XBOX, PEUGEOT, COPPERTONE, and EBAY. The Respondent is using many of its domain names to display the same content as that at the disputed domain name and advertising gambling-related services. The Respondent’s pattern of registering trademark-infringing domain names to advertise gambling services (whether or not the links are functional) is indicative of an intention to derive illegitimate commercial gain.
3. The disputed domain name was registered and is being used in bad faith. The Complainant’s earliest trademark registration for FXCM predates the disputed domain name’s registration date by 18 years. Anyone searching the FXCM mark would easily find it on public trademark databases and on the first page from a Google search. The Respondent’s failure to respond to the cease and desist letters shows that it knowingly acted in bad faith. The Respondent’s pattern of registering “trademark-abusive” domain names, preventing other registrants from reflecting their trade marks is evidence of bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by registering a domain name which is confusing similar to the Complainant’s FXCM mark. The addition of the term “chinese” further confuses Internet users into thinking that the disputed domain name is affiliated with or endorsed by the Complainant, given that the FXCM mark is well known in China.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established it has rights in the FXCM trade mark. The trade mark is identifiable in the disputed domain name especially since it is separated from the word “chinese” by a hyphen. The trade mark FXCM has been incorporated in its entirety in the disputed domain name. The Panel agrees that the addition of the word “chinese-” in the disputed domain name does not remove the confusing similarity with the FXCM trade mark. In this regard, the Panel relies on section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which states 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 first element of paragraph 4(a) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trade mark registrations for FXCM predate the registration of the disputed domain name by close to 20 years.
There is indeed no evidence of a licence or authorization having been extended by the Complainant to the Respondent for the use of the FXCM trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the disputed domain name or other name containing the letters “fxcm”. The Panel agrees that there is no evidence of demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent failed to respond in this proceeding nor to the Complainant’s cease and desist letters. It failed to provide any evidence to rebut the Complainant’s case. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
The second element of paragraph 4(a) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The disputed domain name gives rise to a strong presumption that the Respondent had registered the disputed domain name for the specific intention of attracting, 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 the Respondent’s website.
The Panel is persuaded by the Complainant that the Respondent has registered the domain name in order to prevent the Complainant, the owner of FXCM mark, from reflecting the mark in a corresponding domain name. Moreover, there appears to be a pattern of conduct by the Respondent (paragraph 4(b)(ii) of the Policy).
The Panel is also persuaded that the alternative circumstance under paragraph 4(b)(iv) of the Policy has been established. The Respondent must have been aware of the reputation of the Complainant and its business associated with the FXCM trade mark, which is why it adopted the disputed domain name and made a deliberate effort draw attention to the letters “fxcm” by inserting a hyphen before these letters in the disputed domain name. The addition of the word “chinese” to the disputed domain name was deliberate, in an attempt to create the impression that the disputed domain name corresponds to the Complainant’s website which is targeted towards Internet users in China or Chinese-speaking Internet users.
The Panel finds it improbable that the Respondent was not aware of the Complainant’s business and rights in the trade mark FXCM at the time it registered the disputed domain name. The failure to respond to the Complainant’s cease and desist letters and the claims made in this proceeding is a factor from which the Panel draws an adverse inference.
The third element of paragraph 4(a) of the Policy has been satisfied.
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 <chinese-fxcm.com> be transferred to the Complainant.
Date: June 23, 2020