WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ICC Intercertus Capital Ltd. v. Domain Administrator, See PrivacyGuardian.org / Mag. Bernhard Dostal, Karin West

Case No. D2021-1789

1. The Parties

The Complainant is ICC Intercertus Capital Ltd., Cyprus, represented by Mapa Global Investments SL, aka Mapa Trademarks, Spain.

The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Mag. Bernhard Dostal, Liechtenstein, and Karin West, Germany.

2. The Domain Names and Registrar

The disputed domain name <never-everfx.com> is registered with Key-Systems GmbH; The disputed domain name <nevereverfx.com> is registered with NameSilo, LLC (together, the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On June 8, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 8 and June 9, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 14, 2021.

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 June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021 and was extended to July 12, 2021. The Center received an email communication from the Respondent on July 6, 2021. The Center received email communications from the registrant of <never-everfx.com> on July 7 and July 12, 2021. The Center notified the commencement of Panel appointment process on July 13, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 22, 2021. 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 an entity with an address in Limassol, Cyprus and is an international online broker, providing access to over 130 tradable instruments from six asset classes for both retail and institutional investors. The Complainant is the owner, inter alia, of European Union Registered Trademark no. 017995046 for the word mark EVERFX, registered on March 16, 2019 in respect of services in international class 36 (financial services). The Complainant is also the owner of the domain name <everfx.com>, registered on January 3, 2016 and its related website at “www.everfx.com” offers over 1,000 currencies, stocks, indices, and commodities under the logo “X everfx | for every trade”.

The disputed domain names were registered on the following dates:

<nevereverfx.com> on March 16, 2021; and <never-everfx.com> on March 24, 2021.

There is no website associated with <never-everfx.com>. The website associated with <nevereverfx.com> features a parodied copy of the Complainant’s logo (“NX nevereverfx | for no trade”) and contains material which is critical of the Complainant’s services and seeks to warn consumers against using these. Said website also makes reference to a non-final decision of the German financial regulator “BaFin” dated March 24, 2020 and May 27, 2020 which states that the operator of the website “www.everfx.com”, which it names as a Cayman Islands entity of a similar name to that of the Complainant, is acting illegally in offering services to German consumers because it does not have the requisite license.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Preliminary matter

Even if it is indicated that the disputed domain names belong to different owners, the Complainant maintains a request for consolidation of the complaint because it believes that the disputed domain names are controlled by the same entity. They were registered with eight days of difference, both use the generic Top-Level-Domain (“gTLD”) “.com” and they are exactly the same apart from the hyphen in the second disputed domain name.

Identical or confusingly similar

The disputed domain names reproduce the Complainant's EVERFX trademark with only the addition of the word “never” at the beginning. The Complainant's mark is entirely included within the disputed domain names. Account should be taken of the fact that the Complainant's mark is used under the domain name <everfx.com> whereas the disputed domain names are also “.com” domains. The Complainant’s logo has been copied by the logo used on the website associated with the disputed domain name <nevereverfx.com>.

Rights or legitimate interests

It is usually sufficient for a Complainant to raise a prima facie case against the Respondent under this head and an evidential burden will shift to the Respondent to rebut that prima facie case.

The Respondent is not a licensee of the Complainant, neither has the Complainant authorized or consented to the Respondent’s use of the EVERFX mark, nor is the Respondent affiliated with the Complainant. The Respondent has chosen confusingly similar disputed domain names to the Complainant’s trademark without permission. The disputed domain names are not derived from the Respondent’s name. The Respondent does not appear to hold any trademarks for the disputed domain names. The Respondent cannot satisfy any of the factors listed in paragraph 4(c) of the Policy.

The evidence strongly suggests that the Respondent has been using the disputed domain names to defame and slander the Complainant, even accusing the Complainant of acting illegally. Such use cannot be considered an expression of lawful criticism. Use of domain names for criticizing and making highly inflammatory statements is not a use in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or a fair use of domain names pursuant to the Policy.

The free speech defense under the Policy is subject to exceptions and qualifications in the case of trenchant and extreme criticism. A noncommercial use will not be a fair use if its purpose is to tarnish the trademark by extreme criticism. The right to operate a domain name for the purposes of lawful criticism of a trademark owner does not extend to occupying a domain name identical to a sign identifying a trademark owner. The Respondent is not at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise freedom of expression. In order to fully exercise free speech rights, it is not indispensable to use someone else’s identical or confusingly similar trademark. An intent to damage the Complainant is an intent to tarnish the Complainant’s trademark.

Registered and used in bad faith

The Respondent is motivated by personal grievance, has made offensive and slanderous allegations about the Complainant and has evinced an intention to tarnish the Complainant’s business and reputation and to damage and disrupt its business.

The evidence shows that the Respondent has acted in bad faith both in the registration and use of the disputed domain names. The Respondent has adopted the Complainant’s trademark and taken aim at the Complainant with the apparent intention of mounting as strong a case as possible against it. Pivotal to that case must have been the desire to get the attention of at least some Internet users who may be initially confused and/or assume that the domain name may lead or have some relevance to an official EverFX.com website. As the Respondent clearly knew of the Complainant’s trademark at the time of registration, this is itself evidence of bad faith in the registration of the domain name.

It is clear that the Respondent’s intention is damaging to the Complainant's reputation since virtually the whole of the website associated with the disputed domain name <nevereverfx.com> seems to be given over to achieving that objective. There is some basis for the Complainant’s allegation that the content on the website shows an intention to tarnish the Complainant’s business and reputation, and damage and disrupt its business.

The Respondent appears to be an individual residing in Liechtenstein and would be subject to the criminal code of that country whereby making false claims that damage or endanger a person's creditworthiness, business activity, or professional advancement is a criminal offense.

The Respondent's website falsely accuses the Complainant of not having an accreditation or broker license from an EU member state. The Complainant is authorized and regulated by the Cyprus Securities and Exchange Commission (CySEC), with license number 301/16, EEA Cross-borders Registration: CNMV (Spagna) reg. 4256, AFM Olanda, FI Svezia and KNF Polonia. Therefore, the Complainant is licensed by financial market regulators in EU member states and the Complainant's website at "www.everfx.com" clearly contains this information.

In choosing the Complainant’s trademark, the Respondent has created a situation where at least some Internet users will be attracted to the Respondent’s site because of its name and will then be subjected to a strong attack on the Complainant, including allegations that it is in breach of the law and other allegations designed to damage the Complainant in the eyes of its customers, potential buyers and the public. That conduct amounts to bad faith both with respect to registering the disputed domain name and using it on the website associated with the disputed domain name <nevereverfx.com>. Although the disputed domain name <never-everfx.com> has not been used, this disputed domain name is identical to the other disputed domain name apart from the hyphen and it is sensible to conclude that the Respondent may use it for the same purpose.

The Respondent uses a privacy shield and although these can be used for legitimate purposes, it is difficult to see why the Respondent needs to conceal its identity other than to frustrate the purposes of the Policy or to prevent the Complainant protecting its trademark against infringement, dilution and cybersquatting. A privacy shield may allow registrants to transfer domain name registrations among themselves without any public record that there has been a transfer, allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings under the Policy. Such use defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in a formal Response. However, in an informal email dated July 6, 2021, a person named as and claiming to be the registrant of the disputed domain name <nevereverfx.com> made the following contentions (in summary and machine translated from German):

The language of the proceeding should be German. The Complainant's trademark rights do not apply to the Respondent's sphere of activity. The Complainant's trading platform is illegal in the opinion of various European authorities and courts and the Complainant is acting illegally in the European Union (link provided to a decision, in the German language, of the German financial regulatory authority dated April 6, 2020 and May 27, 2020 referring to a non-final decision regarding an entity named ICC Intercertus Capital (Cayman) Limited and to its trading platform at “www.everfx.com”, noting that said entity did not have the required license and was “therefore acting illegally”). Some of the companies listed as brokers do not have any authorization to work as broker or trader in the European Union and elsewhere.

The Complainant and the Respondent are not in competition with one another and there is no risk of confusion for potential customers. Freedom of thought and freedom of expression are protected in Articles 9 and 10 of the European Convention on Human Rights. The Respondent will take action to protect these rights. Injured customers also have the right to make their experiences public to warn against fraudulent activities.

The website associated with the disputed domain name is operated editorially by media workers and journalists and media privilege and free journalistic publication, which includes critical reporting, applies. There is a clear visual content and name demarcation between the Parties' domain names such that it is clear that the disputed domain name <nevereverfx.com> is a parody or satire on the Complainant's domain name. There is no possibility for confusion.

The Respondent adds that it cannot provide any information on the other disputed domain name as it did not “reserve” it.

The registrant of the second disputed domain name <never-everfx.com> provided a declaration dated July 7, 2021 in which it stated that said disputed domain name had never been in use and did not infringe the Complainant’s rights. Said registrant indicated that it doubted that the rights of the Complainant could be infringed through mere reservation of the disputed domain name without the publication of any website. Due to the Panel’s decision as to consolidation of the Complaints (see below) the merits of these particular contentions will not be examined in this Decision.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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. Preliminary issue: Consolidation of Complaints against Multiple Registrants

The Complainant has requested that its complaints against the two separate registrants of the disputed domain names be consolidated within the present Complaint.

It is the consensus of previous decisions under the Policy that consolidation of multiple domain name disputes in terms of a request under paragraph 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve, provided also that such consolidation is procedurally efficient (on this topic, see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Indicia of common control being exercised over domain names may include commonalities in registrant information, such as shared administrative or technical contacts, or shared telephone numbers, postal or email addresses, or other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.

In the present case, the only indicia of common control put forward by the Complainant are the proximity in time between the registration dates of the two disputed domain names, namely eight days, and the similarity of the disputed domain names themselves. In other respects, however, their registration details and configuration differ. They are registered to different holders based in different countries with different contact details. Only one of the disputed domain names is configured to point to a website while the other is parked on a registrar parking page. Different registrars have been used and the disputed domain names delegate to different name servers. No commonalities in the configuration of the disputed domain names or the WhoIs data have been put forward which are suggestive of the exercise of any common control.

The Panel accepts that the proximity in date between the registration dates of the two disputed domain names and their similarity in composition raises at least a possibility that the registrations may arise from similar or related circumstances. Nevertheless, that is not the same as establishing that the two are under common control or that there is a sufficient unity of interests. None of the typical indications which suggest a single controlling mind have been put forward, such as an identity of registrars selected for the domain names concerned, similarities in aspects of the WhoIs record, matching name server delegations or configurations, and/or common features within hosting arrangements or website content.

In addition to the lack of strong evidence of common control, the Panel must also factor in the position adopted by the registrants of the respective disputed domain names in this case. Two informal Responses have been produced by two different registrants giving rise to different answers to the Complaint in respect of each of the disputed domain names. The registrant of the disputed domain name <nevereverfx.com> expressly denies having registered the disputed domain name <never‑everfx.com> and goes on to discuss the active content at its disputed domain name with regard to freedom of speech issues. The registrant of the disputed domain name <never‑everfx.com> only discusses its own disputed domain name and does not mention the other. The latter’s informal response focuses entirely on the fact that its own disputed domain name is passively held. In the face of the contrasting positions adopted by these registrants, the Panel does not consider that it would be fair or equitable to expect them to answer the Complainant’s allegations regarding both of the disputed domains in a single Complaint, particularly in the absence of sufficient features indicating that their domain names are more probably than not under common control or that there is a sufficient unity of interests.

In all of these circumstances, the Panel declines to consolidate the Complaints. The Complaint will therefore proceed against the disputed domain name <nevereverfx.com>. The Panel refers to the remaining domain name <nevereverfx.com> as “the disputed domain name” and its registrant Domain Administrator, See PrivacyGuardian.org / Mag. Bernhard Dostal as “the Respondent” in the remainder of this Decision.

The domain name <never-everfx.com> will not be considered in this case (without prejudice to the filing of a separate UDRP complaint).

B. Preliminary issue: Language of the proceeding

The Respondent has requested that the language of the proceeding be German. During the verification process, the Registrar of the disputed domain name confirmed that the language of the applicable Registration Agreement is English. Paragraph 11(a) of the Rules states 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 Panel sees no reason in the present case to depart from the usual approach set out in terms of paragraph 11(a) of the Rules, particularly in light of the fact that the Respondent’s website content is in English, and accordingly determines that the language of the administrative proceeding shall be English. The Panel has obtained a reasonable understanding of the terms of the Respondent’s informal response via a machine translation into English.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the owner of the registered trademark specified in the factual background section above. This mark is identical to the second level of the disputed domain name, other than the fact that in the disputed domain name the mark is prefixed by the word “never”. The presence of this word does not alter the fact that the Complainant’s mark is entirely reproduced in the disputed domain name and is wholly recognizable therein.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The issue between the Parties on this topic is relatively narrow. The Complainant indicates that the Respondent is using the website associated with the disputed domain name to publish material that is defamatory of the Complainant, which it asserts is trenchant, extreme, and inflammatory, going as far as accusing the Complainant of acting illegally. The Respondent asserts in turn that it is exercising its right to noncommercial criticism of the Complainant, effectively a case along the lines of paragraph 4(c)(iii) under the Policy.

Panels under the Policy recognize that the use of a domain name for noncommercial free speech can in principle support a respondent’s claim to a legitimate interest under the Policy (see section 2.6 of the WIPO Overview 3.0). To support such fair use, the Respondent’s criticism must be genuine and noncommercial, and not a pretext for cybersquatting, commercial activity, or tarnishment. Where the domain name concerned is not identical to the complainant’s trademark but comprises the mark plus a derogatory term (the example often cited is “sucks”) panels tend to find that the Respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false.

Here, the Respondent has prefixed the Complainant’s mark with the word “never” in the disputed domain name. In context, this is likely to be understood by most viewers as derogatory, given that it combines both the Complainant’s mark and the phrase “never ever” into a portmanteau or blended term. This would not likely be a term which Internet users would expect the Complainant to use of itself, and, in the Panel’s opinion, the phrase “never ever fx” as a play on the Complainant’s mark provides a sufficient indication that the disputed domain name hosts a website critical of the Complainant. There does not appear to be a risk that the disputed domain name would be perceived by the public as being authorized or affiliated with the Complainant (otherwise known as the “impersonation test” – see Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 and section 2.6.2 of the WIPO Overview 3.0).

Many panels under the Policy, the present Panel included, typically consider the use of an identical domain name to the trademark concerned (i.e., <trademark.tld>) to constitute an impermissible risk of user confusion even where used in relation to genuine noncommercial free speech. However, as indicated above, the Panel finds that the disputed domain name does not fall foul of the “impersonation test” in this case. As described by the panel in Dover Downs, supra, “[…] the test does not bar registrants from using a domain name that contains a trademark plus an additional, distinguishing term. Registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder.” While not so unambiguous as the use of the word “sucks” or a similar derogatory term, the Panel finds the distinguishing word “never” which creates the phrase “never ever”, where the word “ever” is also shared with the Complainant’s EVERFX mark, to be sufficiently clear as to signal to the public the potential presence of content critical of the Complainant.

Turning to the subject matter of the content at the disputed domain name, the Panel does not share the view of the Complainant that this is a pretext for cybersquatting or tarnishment of the Complainant’s mark. The Respondent’s website content takes the form of advice or warning to consumers to avoid particular forms of financial platforms, principally that of the Complainant. The Respondent refers to the decision of the German financial regulator as described in the factual background section and in the Respondent’s contentions above. Such decision, although stated to be not of a final nature, refers directly to the Complainant’s website, albeit that it is cast as a decision against a Cayman Islands company of a similar name to the Complainant.

On the whole, the tone of the Respondent’s website appears to the Panel to be relatively measured and earnest for a criticism site, and could not be described in any real sense as inflammatory. The suggestion from the content is that the Respondent believes that it has had an adverse experience from using the services on the Complainant’s website and wishes to communicate this to others (for example, Internet users are invited to make contact if they have had similar negative experiences in terms of the phrase “Have you lost money too?”). In noting this, however, the Panel adds that it is not in any position to determine the accuracy, reasonableness, allegedly defamatory nature, or otherwise of the criticism expressed by the Respondent, nor does it require to do so in terms of its analysis under the Policy (see, for example, the comments of the panel in MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. DME2014-0008). It is sufficient for the Panel to note that the critical views set out on the website associated with the disputed domain name appear on balance to be genuinely held and genuinely expressed, and that there is no evidence either on said website (or for that matter elsewhere on the record) that such content is primarily a pretext for cybersquatting, commercial activity, or tarnishment.

In these circumstances, the Panel finds that the Complainant has failed to carry its burden in respect of the requirements of paragraph 4(a)(ii) of the Policy. The Complaint therefore fails.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In the present case, consideration of the topic of registration and use in bad faith closely mirrors that of the discussion above concerning rights and legitimate interests. In other words, the Panel has found that the disputed domain name passes the “impersonation test” and has been used in connection with genuine noncommercial criticism. The Complainant has not shown to the Panel’s satisfaction that the use of the website associated with the disputed domain name for free speech purposes is primarily a pretext for cybersquatting, commercial activity, or tarnishment. Had there for example been referrals to competitors of the Complainant (so far as the Panel can tell there are not) that may be a different story,¹ but most of the content is critical of the Complainant or seeks to provide general information on how Internet users can take care when undertaking certain types of transactions (e.g., to look for a license/accreditation, or for third-party verifications). A domain name which passes the “impersonation test” outlined above which has been registered and used for the purpose of genuine noncommercial criticism could not be described as having been registered or used in bad faith in terms of the Policy.

The Panel observes that the Policy is not a substitute for an action of defamation (see, for example, the comments of the panel in Chesterfield Valley Investors, L.L.A dba Gateway Classic Cars of St. Louis v. Brock Winters, WIPO Case No. D2019-1380) and the Complainant is free to pursue this matter in a court of competent jurisdiction should it elect to do so. Nor is the Policy a substitute for a criminal complaint to the relevant authorities, in the circumstances where the Complainant has alleged that the Respondent is breaching the criminal law relating to false claims in its jurisdiction. Such courses of action remain open to the Complainant and, accordingly, the Panel notes that it does not address its Decision to the attention of any other forum that may ultimately be seized of the matter.

In these circumstances, the Panel finds that the Complainant has failed to carry its burden in respect of the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: August 5, 2021

¹ The Panel does note that the “Contact” link on the website goes to what appears to be the personal email address of the Respondent for his work email address at his PR firm; this seems to be merely used as a mean of contacting the Respondent, and not to direct users to a competitor of the Complainant.