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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OANDA Corporation v. Contact Privacy Inc. Customer 0156022288 / Oanda Ltd, Philimonon Co.

Case No. D2020-1901

1. The Parties

The Complainant is OANDA Corporation, United States of America (“United States”), represented by Faegre Drinker Biddle & Reath LLP, United States.

The Respondent is Contact Privacy Inc. Customer 0156022288, Canada / Oanda Ltd, Philimonon Co., United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <oandaassets.com> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 22, 2020, 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 July 24, 2020 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 July 29, 2020.

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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 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 is a global company based in the United States offering leading currency solutions for both retail and corporate clients. The Complainant began business from as early as June 1996 and has branch offices in Canada, the United Kingdom, Germany, Poland, Singapore, Australia, Japan, and India.

The Complainant is the owner of numerous trade mark registrations for the OANDA mark in various jurisdictions, including, inter alia, the OANDA trade mark (Trademark Registration No. 2874938) registered on August 17, 2004 in the United States.

The Complainant also owns and operates the domain name <oanda.com>, which was registered on August 4, 1996.

The Respondent registered the Disputed Domain Name on October 23, 2019. The Disputed Domain Name resolves to a website related to cryptocurrencies.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s OANDA trade mark, which has been wholly incorporated into the Disputed Domain Name, with the addition of the generic term “assets”;

(b) The Disputed Domain Name has never been used, and has not been put into use, by the Respondent for any bona fide offering of goods or services. The Respondent was not commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its OANDA trade mark. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and

(c) The Complainant’s OANDA trade mark is well-known in the financial industry and their registrations predate the creation of the Disputed Domain Name. Therefore, it is highly likely that the Respondent was aware of the Complainant’s registered rights in the OANDA trade mark when registering the Disputed Domain Name. The website to which the Disputed Domain Name resolves contains fake contact information and the only functioning elements of the website allow Internet users to input sensitive information. It is clear that the website to which the Disputed Domain Name resolves was primarily used as a phishing site. In addition, the fact that the Respondent failed to give accurate WhoIs information supports a finding of bad faith. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the OANDA trade mark, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s OANDA mark in its entirety with the addition of a dictionary term “assets”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The mere addition of the word “assets” does not appear to have the effect of distinguishing the Disputed Domain Name from the Complainant’s OANDA trade mark and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s OANDA trade mark.

The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s OANDA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the OANDA trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the OANDA mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to an imposter website that contains fabricated and incoherent information relating to the Respondent and allows visitors to submit their sensitive personal information. The Panel agrees with the Complainant that the Disputed Domain Name was chosen by the Respondent with the aim of creating an impression of association with the Complainant and that the website to which the Disputed Domain Names resolves was likely to be primarily used as a phishing site. Therefore, it cannot be said that such use by the Respondent constitutes a bona fide offering of goods or services.

There is also no evidence that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s OANDA trade mark appears to be fairly well-known. The Panel acknowledges that the top Google search results returned for the keyword “oanda” are exclusively associated with the Complainant, and accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and their rights in the OANDA mark. As such, the fact that the Disputed Domain Name incorporates the Complainant’s OANDA mark in its entirety creates a presumption of bad faith.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith:

(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal his identity and inaccurate contact information in the WhoIs records (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193); and

(iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant’s OANDA trade mark, and that the website to which the Disputed Domain Name resolves contained mostly fake contact information and was likely used as a phishing site to collect account credentials and sensitive personal information from users.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and 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 Name <oandaassets.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: October 2, 2020

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