WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fmd Financial Pty Ltd v. Domain Administrator, see PrivacyGuardian.org / Nike Nolan
Case No. D2020-2713
1. The Parties
The Complainant is Fmd Financial Pty Ltd, Australia, represented by PIPERS INTELLECTUAL PROPERTY, New Zealand.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Nike Nolan, United States.
2. The Domain Name and Registrar
The disputed domain name <fmdfinanciallimited.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 October 28, 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 November 1, 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 November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on December 10, 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 company located in Australia, offering financial planning and financial management and investment services. It has offices in Melbourne, Brisbane and Adelaide and advises on funds which total more than AUD 1 billion. The Complainant operates a website offering information about its services, which is located at “www.fmd.com.au”. The Complainant and its predecessor company have traded as “fmd financial” since 2001, although the Complainant only applied to register a trade mark for this trading style in September 2020.
The disputed domain name was registered on April 4, 2020. It resolves to a website branded “FMD Financial Limited” on which the Respondent describes itself as “a reputable Australian private limited company, a cryptocurrency investment platform” and on which has been placed an image of a company registration certificate for the Respondent which, it transpires, is fake. The contact address provided by the Respondent on its website is the same as the Complainant’s physical address. The Complainant has produced emails from members of the public who have transferred money for investment to the Respondent, under the impression that the website linked to the disputed domain name was operated by the Complainant, and have not been repaid, as well as emails from many other members of the public who have been contemplating making similar investments and have likewise believed the Respondent’s website to be operated by the Complainant.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to a trade mark or service mark in which it has rights. Whilst the Complainant has only recently applied to register a trade mark for FMD FINANCIAL, it has traded under this name since 2001. This is substantiated by the examples provided from the Complainant’s website, dating from 2005 onwards, as well as by the examples of third party publications referring to the Complainant and its supply of services under the FMD FINANCIAL mark, dating back to 2011 and 2012.
The disputed domain name wholly contains the Complainant’s trade mark. The only differing element is the addition of the word “limited”. This does not sufficiently distinguish the disputed domain name from the Complainant’s trade mark as it is descriptive and should not avoid a finding of confusing similarity.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has been operating in the financial services sector for nearly 20 years. Only holders of an Australian Financial Services Licence can provide financial advice in Australia. The Respondent does not hold, and never has held, such a licence. It therefore cannot be considered as having rights or a legitimate interest in respect of the disputed domain name, given that the presence of the word “financial” suggests that the Respondent is providing financial services. The disputed domain name is being used to redirect Internet traffic away from the Complainant’s own website in a manner that does not comprise a bona fide offering of goods and services; see Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov, WIPO Case No. D2016-0654. The Respondent’s purpose in registering the disputed domain name appears to have been to impersonate the Complainant, trading on its goodwill and conducting a fraudulent investment scheme. Evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by the Respondents; see Afton Chemical Corporation v. Meche Kings, WIPO Case No. D2019-1082.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Bad faith registration can be found where a respondent knew or should have known of a complainant’s rights and nevertheless registered a domain name in which it had no rights or legitimate interests. Given that the Respondent registered the disputed domain name and thereafter used it to establish a website which impersonated the Complainant, it must have known of the Complainant and its FMD FINANCIAL mark when it registered the disputed domain name.
The Respondent’s website has listed the Complainant’s physical address as its own address and has also included a fake company registration certificate on its website. The Complainant has had to deal with a large number of consumers who have been scammed by fraudulent activities linked to the Respondent’s website, each of whom transferred money to the Respondent under the impression that it was the Complainant. Each instance of confusion has detrimentally impacted on the Complainant’s brand and its integrity and the victims of the Respondent’s fraudulent activities have no chance of recovering their money. It is evident that the Respondent has designed its website, including in particular, its logo, so as to have some conceptual similarities to that of the Complainant and thereby to take unfair advantage of the Complainant and its market reputation.
The Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services which purported to be offered on it. See, by way of example; Hanai Capital, LLC v. Domain Administrator, See PrivacyGuardian.org / Nike Nolan, WIPO Case No. D2020-0846, which deals with conduct on the part of a respondent which closely mirrors that of the Respondent in these proceedings. There is no evidence that the Respondent has any conceivable claim to good faith use. Its actions show clear intent to abuse the registration of the disputed domain name in order to seek profit from and exploit the Complainant’s trade mark and amounts to 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 proves 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; 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 did not apply for a registered trade mark for FMD FINANCIAL until September 16, 2020, that is approximately 5 months after the registration of the disputed domain name. However, the Complainant asserts that it has pre-existing unregistered trade mark rights in its mark. Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) explains that; “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.
In support of its assertions, the Complainant has explained the nature and extent of marketing of its FMD FINANCIAL trading style and produced screen prints from its website on various dates between 2005 and 2015, as well as extracts from third party publications, dating from 2011 and 2012, which reference the Complainant. These confirm use of the FMD FINANCIAL trading style by the Complainant for, at least, the last 15 years and third party recognition of this trading style as an identifier of the Complainant. A further indication that the Complainant has developed repute in FMD FINANCIAL is that its brand has come to the Respondent’s attention. The Panel therefore accepts that the Complainant has acquired unregistered trade mark rights in FMD FINANCIAL for the purposes of the Policy.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s FMD FINANCIAL mark and the disputed domain name is the additional word “limited” which is placed after the Complainant’s mark. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “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 Complainant’s FMD FINANCIAL trade mark is recognizable within the disputed domain name and the Panel accordingly 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 sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The Complainant has provided evidence that the Respondent’s website masquerades as that of the Complainant in order to encourage Internet users to invest in it. Having regard to the fact that the Respondent has solicited investments on the basis of, amongst other indicia of fraudulent activity, a false contact address and a fake company registration certificate, there is persuasive evidence of dishonest activity on its part. It is therefore clear that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Indeed, as explained at section 2.13.1 of the WIPO Overview 3.0; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character and does not constitute fair use. Moreover, as explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has made out a prima facie case under the second element and, in the absence of any response to the Complaint by the Respondent, the Panel finds that it has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The use to which the Respondent has put the disputed domain name following registration, namely to resolve to a website which purports to be that of the Complainant, enables the Panel to discount the possibility that the Respondent registered the disputed domain name without any awareness of the Complainant, its name and its use of the FMD FINANCIAL mark. The facts and matters set out in the Complaint establish that the Respondent registered the disputed domain name in order to obtain some form of illegitimate advantage from it and the Panel accordingly finds that such registration was in bad faith.
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 in 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 use to which the Respondent has put the disputed domain name falls squarely within these circumstances in that the website to which it has resolved purports to be operated by the Complainant and is being used for fraudulent purposes. The belief of Internet users that they had found the Complainant’s website will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s FMD FINANCIAL trade mark. There are, as the Complainant has said, some similarities between the parties’ websites at a conceptual level although the most compelling evidence that the Respondent is masquerading as the Complainant in order to defraud Internet users is its use of a
near-identical name coupled with the adoption of the Complainant’s contact address.
As explained at section 3.1.4 of the WIPO Overview 3.0; “As noted in section 2.13.1, given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. See also; Hanai Capital, LLC v. Domain Administrator, See PrivacyGuardian.org / Nike Nolan (supra). 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 <fmdfinanciallimited.com> be transferred to the Complainant.
Date: December 24, 2020