WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FXDirectDealer, LLC v. 赵志明 (zhao zhi ming)
Case No. D2021-1899
1. The Parties
The Complainant is FXDirectDealer, LLC, United States of America, represented by Kolitch Romano LLP, United States of America (“U.S.”).
The Respondent is 赵志明 (zhao zhi ming), China.
2. The Domain Name and Registrar
The disputed domain name <fxdddemo.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2021, 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 June 21, 2021, 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 amendment to the Complaint in English on June 22, 2021.
On June 21, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On June 22, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in English and Chinese, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021.
The Center appointed Francine Tan as the sole panelist in this matter on July 29, 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, FXDirectDealer, LLC, states that it is a well-known financial services company and a global leader in its online foreign exchange trading and education services. The Complainant has been using its FXDD trade mark in connection with its goods and services, including at its website “www.fxdd.com” since as early as 2002. The Complainant also uses FXDD as a source identifier as part of a family of FXDD marks in connection with its goods and services, e.g., FXDD TRADING, FXDD OPTIONS TRADER, FXDD GLOBAL, and FXDDCLOUD (collectively, “the FXDD Marks”).
The Complainant’s clients are spread across in at least 180 countries around the world and they include individuals and institutional traders, hedge funds, commercial entities, brokerage firms, and money managers. The Complainant states that it has invested substantial amounts of time and resources in building, promoting, maintaining, and protecting its rights in its FXDD Marks and has built up valuable and substantial goodwill through widespread and extensive use in the U.S. and internationally.
The Complainant owns trademark registrations for the FXDD Marks in many countries around the world, including the following:
(i) U.S. Registration No. 4,418,706, FXDD, registered on October 15, 2013;
(ii) U.S. Registration No. 3,991,011, FXDD (figurative), registered on July 5, 2011;
(iii) U.S. Registration No. 4,459,224, FXDDCLOUD, registered on December 31, 2013;
(iv) International Registration No. 1175697, FXDD, registered on August 7, 2013; and
(v) International Registration No. 1125315, FXDD (figurative), registered on May 21, 2012.1
The disputed domain name <fxdddemo.com> was registered on March 27, 2021. At the time of filing the Complainant and amended Complainant, the disputed domain name resolved to a website displaying hardcore pornographic materials, various graphic sexual images, the use of explicit language, and online gambling content.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s FXDD Marks. It fully incorporates the Complainant’s FXDD mark in its entirety. The FXDD mark is plainly recognizable within the disputed domain name. The addition of the term “demo” does not prevent a finding of confusing similarity with the Complainant’s trade mark but in fact increases the likelihood of confusion. The Complainant’s services include online trading platforms for which the Complainant provides “demo accounts”. In the field of online trading platforms, including foreign exchange platforms, the term “demo account” generally describes a user account loaded with fake funds so that a user can experiment with the platform before setting up a real account loaded with real money. Therefore, consumers would readily associate the word “demo” with the Complainant’s services and the Complainant’s website which in fact offers demo account services to consumers. The addition of the word “demo” leads Internet users to falsely believe that there is a connection between the disputed domain name and the Complainant, and that the goods and/or services provided under the disputed domain name are owned, controlled, sponsored, and/or endorsed by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not licensed, authorized, or permitted the Respondent to use the FXDD Marks in any manner, including in domain names. Moreover, the Complainant’s use of the FXDD Marks long predates the registration of the disputed domain name. The Respondent is not known by the disputed domain name or any other name that incorporates the letters “fxdd”. Neither has the Respondent used or made preparations to use any such name in connection with a bona fide offering of goods or services.
The website to which the disputed domain name resolves exhibits the Respondent’s intention to obtain unfair commercial gain by misleadingly diverting Internet users to his website containing pornographic content, which tarnishes the Complainant’s FXDD Marks. An “Advertising TG contact”2 with anonymous username is provided on the Respondent’s website. The Respondent is therefore clearly using the disputed domain name to generate revenue by promoting pornography and online gambling.
The Respondent’s use of the disputed domain name cannot be considered fair use as the disputed domain name as it contains the Complainant’s FXDD trade mark and the term “demo” which impersonates and/or falsely suggests sponsorship or endorsement by the Complainant. The Respondent had deliberately targeted the Complainant and its FXDD Marks to create a false impression of an association with the Complainant and ride off the Complainant’s reputation and goodwill to attract Internet users to his website for commercial gain.
The disputed domain name was registered and is being used in bad faith. The Complainant asserts that its FXDD Marks are well known. There is therefore a presumption of bad faith on the Respondent’s part since the disputed domain name contains a well-known mark. The addition of the term “demo” to the disputed domain name also shows the Respondent’s attempt to attract Internet users to his website for commercial gain by creating a likelihood of confusing with the Complainant’s FXDD Marks as to the source, sponsorship, affiliation and/or endorsement of his website. Such use by the Respondent also tarnishes the Complainant’s FXDD mark. The Respondent would have been aware of the Complainant’s FXDD Marks and had either deliberately ignored, or actively intended to exploit the reputation and goodwill of the Complainant’s FXDD Marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: 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 language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English, the reasons being that the circumstances show that the Respondent is familiar with the English language:
(i) the disputed domain name is in the English language – it contains the English abbreviation “demo” and the Complainant’s English-based mark, FXDD;
(ii) “demo” is not an arbitrarily chosen English word but is closely related to the services the Complainant offers. It has a meaningful connection to the goods and services offered by the Complainant under the FXDD Marks;
(iii) a portion of the website to which the disputed domain name resolves is in the English language – there are English-language titles and English-language video content; and
(iv) the email address used by the Center to correspond with the Respondent appears to be associated with the registration of a number of other domain names comprising English language words. Examples of these are: <dvdxcopy-software.com>, <layerlovers.com>, <forumkalbi.com>, <bestindiatimes.com>, <allscubadivingsites.com>, <parallel-electric.com>, <future-software.com.cn>, and <job-google.com>.
The Respondent did not respond on issue of the language of the proceeding.
The Panel determines that English will apply as the language of the proceeding. In the exercise of its discretion, the Panel has to make its determination in the spirit of fairness and justice to the Parties, and to ensure that the proceeding takes place expeditiously and in a cost-effective manner. In this case, the Panel does not find anything to contradict what appears to be the case, that the Respondent is comfortable with and understands the English language. The circumstances enumerated by the Complainant sufficiently satisfy the Panel that the Respondent is likely to be conversant and/or familiar with the English language. Moreover, the Panel notes that the Respondent has chosen not to participate in this proceeding and that all of the Center’s communications with the Parties have been sent in both English and Chinese. In the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Respondent would be prejudiced by a determination that English would be adopted as the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the FXDD Marks. The FXDD trade mark is reproduced in in the disputed domain name with the addition of the descriptive term “demo”, which does not prevent a finding of confusing similarity with the Complainant’s trade mark. The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s FXDD trade mark.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s first use and registrations of the FXDD Marks long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use the FXDD sign as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “fxdd” or “fxdddemo”. The use of the disputed domain name which fully incorporates the Complainant’s FXDD trade mark and a descriptive term “demo” for a website offering pornographic and online services does not constitute a legitimate noncommercial offering of goods and services.
The burden of production accordingly shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that it has acquired significant reputation and goodwill through widespread and extensive use of its FXDD marks around the world. Subject to evidence to the contrary, the Panel is persuaded that the Respondent could not by pure coincidence and without prior knowledge of the Complainant and its FXDD Marks have selected the disputed domain name without the Complainant and/or its FXDD trade mark in mind. The Complainant’s FXDD Marks are registered in China and the Complainant also operates a website in Chinese. The combination of “fxdd” with the word “demo” which the Respondent selected also strongly suggests a deliberate attempt to impersonate the Complainant and mislead consumers. The Respondent was therefore, more likely than not, well aware of the Complainant and of its FXDD Marks. The “mere registration of a domain name that is identical or confusingly similar (particularly domain names […] incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. (See section 3.1.4 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.)
The Complainant relied on a couple of UDRP decisions which have recognized that bad faith use and registration are demonstrated where the domain names in dispute are confusingly similar to a complainant’s well-known trade mark and which are used for pornographic websites. The Panel agrees with these conclusions as such domain name registrations take unfair advantage of and damage the distinctive character and reputation of the complainant’s mark.
The Panel is persuaded that the Respondent acted with opportunistic bad faith, targeting the Complainant and its FXDD mark and sought to ride off their reputation to draw Internet traffic to his website. The Panel finds that the circumstances of this case, namely:
(i) the Respondent’s absence of rights or legitimate interests in the disputed domain name,
(ii) the widely-known nature of the Complainant and its FXDD Marks,
(iii) the Respondent’s failure to respond in this proceeding, and
(iv) the nature of the website to which the disputed domain name resolves,
all lead to the conclusion that the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <fxdddemo.com> be transferred to the Complainant.
Date: August 9, 2021
1 The International registrations designate China, which is where the Respondent appears to be located.
2 “TG” is understood to refer to the Telegram messaging application.