WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OANDA Corporation v. Wenshan Lin, WhoisGuard, Inc. / Guobing Li, and Tao Liqiang (涛力强)
Case No. D2020-2551
1. The Parties
The Complainant is OANDA Corporation, United States of America (“United States”), represented by Faegre Drinker Biddle & Reath LLP, United States.
The Respondents are Wenshan Lin, China, WhoisGuard, Inc., Panama / Guobing Li, the Cayman Islands, United Kingdom, and Tao Liqiang (涛力强), China.
2. The Domain Names and Registrars
The disputed domain name <oanda-hk.com> is registered with GoDaddy.com, LLC. The disputed domain name <oanda.me is> is registered with NameCheap, Inc. The disputed domain name <oandartw.com> is registered with West263 International Limited. GoDaddy.com, LLC, NameCheap, Inc. and West263 International Limited are referred to below individually and collectively as the “Registrar”.
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On the following day, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 2 and 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2020 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to Complaint in English on October 9, 2020.
On October 5, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding because the language of the registration agreement for the disputed domain name <oandartw.com> was Chinese. On October 8, 2020, the Complainant requested that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.
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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 12, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 14, 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 provides currency exchange and financial information services. It holds trademark registrations for OANDA in multiple jurisdictions, including United States trademark registration number 2874938, registered on August 17, 2004, with a claim of first use in commerce on June 1, 1996; and Chinese trademark registration number G890601, registered from June 16, 2016. Both these registrations specify currency exchange and financial information services in class 36 and they remain current. The Complainant also registered the domain name <oanda.com> on August 4, 1996 and has used it since December 1997 in connection with a website where it advertises and provides information regarding its financial services.
The Respondents are ostensibly three individuals. Their contact addresses in the Registrar’s WhoIs database are demonstrably false.
The disputed domain names were registered on May 18, 2020 (for <oanda.me>); May 28, 2020 (for <oanda-hk.com>); and July 2, 2020 (for <oandartw.com>). At the time of the Complaint, the disputed domain names resolve to websites in English, or English and Chinese, that prominently display the Complainant’s OANDA trademark and logo, offering online trading and investment services, inviting Internet users to download software, log in or create a new account.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s OANDA trademark. Each disputed domain name entirely incorporates that trademark; two of them follow the mark with a geographic designation.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is neither using the disputed domain names in connection with a bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the disputed domain names. The Respondent’s only use of the disputed domain names is to perpetrate a fraud in a manner that tricks unwitting users to believe each disputed domain name is the legitimate property of the Complainant. The Complainant has not given the Respondent permission, authorization, consent or license to use its OANDA trademark.
The disputed domain names were registered and are being used in bad faith. The Respondent is using the Complainant’s OANDA mark in the disputed domain names to attract Internet consumers to its website from which the Respondent derives a financial benefit by offering an imposter counterfeit version of the Complainant’s own software offerings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issues
A. Consolidation: Multiple Domain Name Registrants
The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are under the control of a single criminal enterprise, if not common ownership. The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) of the Rules was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that all three disputed domain names follow a pattern in that they all incorporate the same trademark as their initial element (in one case with a hyphen and in another case with an additional letter “r”) plus a two-letter country code (either in the operative element or the Top-Level Domain (“TLD”) suffix. Two were registered within ten days of each other and all three were registered within 45 days of each other. All three disputed domain names resolve to websites that are presented as if they are operated by, or affiliated with, the Complainant. The contact addresses of the registrants in the Registrar’s WhoIs database are all demonstrably false. In these circumstances, the Panel is persuaded that all three disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names <oanda-hk.com> and <oanda.me> are in English while the Registration Agreement for the disputed domain name <oandartw.com> is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Registration Agreements for two of the disputed domain names are in English while the other disputed domain name resolves to a website with content in both English and Chinese, which shows that the Respondent possesses sufficient knowledge of the English language; and the Complainant would incur significant expense prosecuting the cases regarding the disputed domain names separately.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Registration Agreements are variously in English and Chinese. The Complaint and amendment to the Complaint were filed in English. All the disputed domain names resolve to websites in English or English and Chinese, from which it is reasonable to infer that the Respondent understands the English language. Despite the Center having sent an email regarding the language of the proceeding and notice of the Complaint in both Chinese and English, the Respondent did not comment on the language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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
Based on the evidence presented, the Panel finds that the Complainant has rights in the OANDA trademark.
The disputed domain names wholly incorporate the OANDA trademark as their respective initial elements. One disputed domain name includes the additional element “-hk”, consisting of a hyphen plus an abbreviation for Hong Kong, China (“Hong Kong”). Another disputed domain name includes the additional element “rtw”, consisting of an additional letter “r” plus an abbreviation for Taiwan Province of China (“Taiwan”). As mere geographic elements and punctuation or an additional letter, these elements do not avoid a finding of confusing similarity between these disputed domain names and the Complainant’s trademark.
The disputed domain names also include a TLD suffix, (variously “.com” or “.me”, the country code TLD for Montenegro). As a technical requirement of registration, a TLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.
The disputed domain names resolve to websites that display the Complainant’s OANDA trademark and logo and purport to offer the same type of services as the Complainant. However, the Complainant submits that it has not given the Respondent permission, authorization, consent or license to use its OANDA trademark. Therefore, the Panel does not find the Respondent’s use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does it constitute a legitimate noncommercial or fair use of the disputed domain names for the purposes of paragraph 4(c)(iii) of the Policy.
The Respondent is variously named in the Registrar’s WhoIs database as “Wenshan Lin”, “Guobing Li” and “Tao Liqiang”, not the disputed domain names. While these names may well be false, there is no evidence that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain names were registered in 2020, many years after the Complainant obtained its trademark registration for OANDA. OANDA is a coined term. The disputed domain names wholly incorporate the Complainant’s OANDA trademark as their respective initial elements, in two cases combining them with geographical terms that give the impression they relate to the Complainant’s subsidiaries or branches in Hong Kong or Taiwan. The websites associated with the disputed domain names all prominently display the Complainant’s OANDA logo and two of them also present the Complainant’s regulatory approvals and other company information on their respective homepages. These facts indicate to the Panel that the Respondent was aware of the Complainant and targeted its OANDA trademark at the times that he registered the disputed domain names.
The Respondent uses the disputed domain names in connection with websites that are falsely presented as if they are operated by, or affiliated with, the Complainant. The Respondent’s websites offer the same type of services as the Complainant. The disputed domain names are clearly intended to attract Internet users by creating a likelihood of confusion with the Complainant’s OANDA trademark. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.
The Panel notes that the use of the disputed domain names has changed during this proceeding and that <oanda-hk.com> now resolves to a website that makes no reference to the Complainant while the other two disputed domain names no longer resolve to any active website. These changes of use do not alter the Panel’s conclusion, in fact, they may be further indications of bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <oanda-hk.com>, <oanda.me>, and <oandartw.com> be transferred to the Complainant.
Date: December 27, 2020