WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OANDA Corporation v. See PrivacyGuardian.org, Domain Administrator
Case No. D2020-3003
1. The Parties
The Complainant is OANDA Corporation, United States of America (“United States” or “U.S.”), represented by Donahue Fitzgerald, United States.
The Respondent is See PrivacyGuardian.org, Domain Administrator, United States.
2. The Domain Name and Registrar
The disputed domain name <oanda2u.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 12, 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 for the Disputed Domain Name.
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 November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on December 22, 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 has owned and used the trademark OANDA since 1996. The Complainant owns a United States Trademark Registration number 2874938, registered on August 17, 2004. The Complainant provides foreign exchange trading services in many jurisdictions under the Trademark. It promotes its services at “www.oanda.com”.
The Disputed Domain Name was registered August 8, 2020. The Registrant provided a website utilizing the Complainant’s OANDA trademark and logo, ostensibly promoting foreign exchange services.
5. Parties’ Contentions
The Complainant has continuously used the trademark OANDA (the “Trademark”) in commerce since 1996, in relation to a range of foreign exchange trading services, including the provision of trading platforms and downloadable apps used to trade currencies. The Trademark has no meaning except as the Complainant’s name and as a source indicator of its OANDA-branded Services.
In 2004, the Complainant was granted United States registration number 2874938 covering the Trademark, which registration has achieved incontestable status under United States federal law. In addition, the Complainant has registered its exclusive right to use its Trademark in other jurisdictions around the world, including Australia, Canada, China, the European Union, Hong Kong, Singapore, Switzerland, Taiwan, and the United Kingdom. The Complainant also utilizes a distinctive logo in connection with its OANDA trademark.
The Complainant has spent millions of dollars to advertise and promote its OANDA-branded Services. Its OANDA-branded Services have received widespread unsolicited media coverage.
Since 1996, the Complainant has owned the <oanda.com> domain name and has used it as the location of its official website.
The Disputed Domain Name incorporates the Complainant’s mark in its entirety, with only the addition of the generic suffix “2u” appended to the Complainant’s Trademark.
The Respondent has affiliated the Disputed Domain Name with a website (the “Website”). On the landing page of its Website (the “Landing Page”), the Respondent: (a) prominently and repeatedly displays the Trademark; and (b) claims repeatedly to be the Complainant and attempts blatantly to trick Internet visitors into so believing. The topmost content of the Landing Page states: “WELCOME TO OANDA” and “OANDA is a leader in currency data, offering forex and CFD trading, corporate fx payments and exchange rates services for a wide range of organizations and investors.” All of these topics are within the scope of the Complainant’s Services. The Landing Page purports to offer hyperlinks allowing visitors to “DOWNLOAD OUR FOREX APP” and “DOWNLOAD CURRENCY CONVERTER APP”. The Landing Page includes a copyright notice at its bottom stating “© 1996 - 2019 OANDA Corporation”. Near the top of the Landing Page is a hyperlink with the label “SIGN IN”, which when clicked routes users to a second webpage within the Website where they are invited to log into the Website, and which includes a “DISCLAIMER” in which the Respondent advertises itself as “Oanda Trading”.
The Complainant has never authorized the Respondent to: (a) incorporate the Trademark into the Disputed Domain Name or use the Trademark in any other capacity; (b) provide any OANDA-branded Services to the public, whether in connection with the Trademark or otherwise; (c) provide any products or services to the public in connection with Trademark or in purported connection with the Complainant itself; or (d) assert the existence of any relationship whatsoever with the Complainant. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent, any other registrant of the Disputed Domain Name (i.e., to the extent the Respondent alleges it is just a privacy service and not the true registrant of the Disputed Domain Name), any business being conducted in connection with the Disputed Domain Name, the name “oanda2u.com”, or the Website.
The Respondent knew or should have known of the Complainant’s exclusive Trademark rights when the Respondent registered the Disputed Domain Name.
The Website accessible through the Disputed Domain Name is devoted entirely to tricking Internet visitors into believing falsely that the Respondent is supposedly the Complainant and that the Complainant has sponsored or endorsed the Website.
The use of a disputed domain name for an illegal or nefarious purpose—such as the trademark counterfeiting/infringement, unfair competition, and fraud occasioned by the Respondent’s publication of the Website—is not a bona fide offering of goods or services under Policy 4(c)(i). In IFPI Secretariat, IFPI International Federation of the Phonographic Indus. v. Peter Kopimi Sunde aka Brokep, WIPO Case No. D2007-1328, the website to which the disputed domain name resolved prior to the date of the complaint displayed sponsored links to free music downloading sites. The UDRP panel concluded: “Copyright piracy is an activity that directly contradicts the Complainant’s main aims and objectives. Re-directing web traffic from the Complainant’s website to the Disputed Domain Name would be likely in the Panel’s view to cause direct confusion with the Complainant’s rights and activities.” The UDRP panel thus found that the registrant had no rights or legitimate interests with respect to that domain name.
No evidence suggests the Respondent has ever been called by any name incorporating the Trademark or been commonly known by the Trademark or the Disputed Domain Name. This is demonstrated by the fact that the Respondent’s registration information for the Disputed Domain Name does not mention the Trademark.
The Respondent’s nefarious use of the Disputed Domain Name to impersonate the Complainant is not a “legitimate […] or fair use”, but Policy 4(c)(iii) is further unavailable to the Respondent because the Respondent’s only use of the Disputed Domain Name has always been commercial.
The Respondent’s registration of the Disputed Domain Name occurred decades after the Complainant began obtaining its registered and common law rights in its world-famous Trademark and started using its <oanda.com> domain name as the portal to its official website.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the phishing Website by: (a) first creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of either the Respondent or the Website; and then (b) constructing the Website to fool visitors into believing that the Respondent is purportedly OANDA and that the Respondent supposedly offers the OANDA Services, so as to trick those users into doing business with the Respondent instead of the Complainant.
The only plausible analysis of the evidence adduced by the Complainant establishes the Respondent was aware of the Complainant’s trademark rights when the Respondent registered the Disputed Domain Name. The Complainant had owned its trademark rights for decades prior to the date on which the Respondent registered the Disputed Domain Name. The Trademark is an invented word with no meaning other than as a source indicator of the Complainant’s services. The dominant component of the “oanda2u” domain name is the Trademark, and the content of the Website is devoted exclusively to the Complainant’s Services.
Accordingly, the Respondent registered and used the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated its ownership of various registrations covering the OANDA trademark, such as U.S. Trademark Registration No. 2874938. It has demonstrated its use of the Trademark e.g., at its website at “www.oanda.com”.
The Disputed Domain Name reflects the Complainant’s trademark in its entirety, with the addition of the non-distinctive “2u” letters, and the generic Top-Level Domain (“gTLD”) suffix “.com”.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with the Disputed Domain Name.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant alleges that the Respondent utilizes the Disputed Domain Name to hold itself out as the Complainant, pursuant to some fraudulent purpose, such as a phishing scheme. Included as an annex to the declaration of the Complainant’s counsel is both a screen shot of a website accessed via the Disputed Domain Name mimicking the Complainant’s own web page and using its logo, and a further page accessible from that page with a login possibility – again bearing the Complainant’s logo.
In addition to the above evidence, the Panel could not directly verify the Complainant’s allegations, as a firewall blocked access to the website at the Disputed Domain Name. However, the Panel did verify the Complainant’s allegations relating to the Respondent’s use of the Disputed Domain Name by utilizing the archiving service at <archive.org>, and viewing a screenshot of “www.oanda2u.com” taken on September 20, 2020. That screenshot depicted the Respondent’s use of the Trademark and the Complainant’s logo, to purportedly promote various services relating to foreign exchange, and to offer downloads for a currency converter app. The Website identified itself as that of the Complainant, through use of, for example, the correct corporate names of the Complainant’s subsidiaries. Additionally, the Website identified the Twitter handle of the Complainant, “[…]@oanda”, as that of the Respondent.
As discussed further in Section C, the Respondent’s use of the Disputed Domain Name is clearly an intentional attempt to trade off the Complainant’s reputation.
The Complainant is required to establish a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If, however, the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
First, the Complainant has asserted that it did not give any authorization or license to the Respondent to use its trademark to register the Disputed Domain Name, and that the Respondent’s WhoIs information indicates that it is not generally known by the Complainant’s trademark nor by the Disputed Domain Name.
Additionally, the Complainant notes that the Respondent’s deceptive use of the Trademark is not a bona fide use of the Disputed Domain Name. The Complainant asserts that in view of the reputation of its trademark as a well-known trademark, no third party could make any non-infringing use of the Disputed Domain Name.
As the Respondent did not respond to the Complainant’s contentions, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A bad faith registration and use finding is necessary where a disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection to the product suggests opportunistic bad faith”. Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; see also RapidShare AG, Christian Schmidt v. PrivacyProtect.org, Domain Admin n/a Sergey Malgov, WIPO Case No. D2010-0608; Autodesk, Inc. v. PrivacyProtect.org / Tech Domain Services Private Ltd., WIPO Case No. D2011-1958 (“Respondent has no connection to the Complainant or its products that incorporate the Mark into their names, and the Respondent’s opportunistic bad faith is therefore proven.”).
Here, the Respondent has not only adopted the Complainant’s unique and distinctive OANDA trademark, as well as the Complainant’s logo, but the Respondent holds itself out as the Complainant, by purporting to offer the Complainant’s foreign exchange services. There is no doubt that the Respondent’s actions are deliberate and in bad faith. The Complainant has satisfied paragraph 4(b)(iii) 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 Name <oanda2u.com> be transferred to the Complainant.
Date: January 18, 2021