WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. Privacy service provided by Withheld for Privacy ehf/ Mack John, wikina

Case No. D2021-2143

1. The Parties

Complainant is FXCM Global Services, LLC, United States of America, represented by SafeNames Ltd., United Kingdom.

Respondent is Privacy service provided by Withheld for Privacy ehf/ Mack John, wikina, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <fxcmlimited.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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 Complainant on July 8, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 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 Respondent of the Complaint, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 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

Complainant is FXCM Global Services, LLC, a company founded in 1999 and currently based in London. Complainant operates as a retail broker in the foreign exchange market (also known as “Forex”), providing online Forex trading, CFD trading and related services. Complainant’s services intend to provide global traders with innovative trading tools and high-quality training educators. Such tools include mobile trading, one-click order execution and trading from real-time charts. Complainant also offers educational courses on Forex trading.

Complainant’s area of expertise, namely the Forex and CFD marketplaces, are international venues. FXCM Global Services, LLC, as a prominent name in these markets, have a worldwide reputation. This is also evidenced by the fact that Complainant owns many international offices, including offices in Europe, Hong Kong, China, and South Africa, among others.

Complainant’s services are offered through its main website “www.fxcm.com” in several languages, including, but not limited to English, Chinese, German, French and Italian. Complainant also owns a mobile app, which is available on popular app marketplaces such as “Apple Store” and “Google Play”.

Complainant is also known by the name “Forex Capital Markets Limited”, as it is the trade name of one of Complainant’s subsidiary company. Therefore, Complainant is, at times, referred to as “FXCM Ltd”, including in the company’s presentation area on its own website.

Complainant affirms that it has spent a substantial amount of time, money and effort in promoting and marketing the sign FXCM to identify and distinguish its services domestically and internationally, so the referred sign is considered a valuable asset to Complainant. In this regard, Complainant has registered the term FXCM as a trademark in many jurisdictions. Some examples are listed below:

Complainant is also the owner of several domain names containing the trademark FXCM, including the domain name <fxcm.com>, which Complainant owns since July 1, 1999. Meanwhile, the disputed domain name was registered by Respondent on March 30, 2021 – many years after the registration of Complainant’s trade name, domain name <fxcm.com> and cited trademarks. The disputed domain name resolves to a website in which Respondent offers services in the stock market, making several references to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is confusingly similar not only to its distinctive and well-known registered trademark FXCM, and official domain name <fxcm.com>, but also to the trade name of one of Complainant’s subsidiary company “Forex Capital Markets Limited”, referred to as “FXCM Ltd”.

Thus, according to Complainant, the addition of the term “limited” to the trademark FXCM in the disputed domain name does not avoid a finding of confusing similarity under this element, especially because Complainant is at times referred to as “FXCM Ltd” (“Ltd” being an abbreviation for “Limited”).

This way, Complainant alleges that internet users would be easily led to think that the disputed domain name is owned by FXCM Global Services, LLC or anyhow linked to it, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark FXCM nor any permission to register the trademark as a domain name. On the contrary, to the best of the Complainant’s knowledge, Respondent does not have any trademark rights to the term FXCM, since all active trademarks registrations for the term FXCM are held by Complainant. Neither has Respondent received any license from Complainant to use domain names featuring the trademark FXCM.

Complainant also notes that there is sufficient evidence demonstrating that Respondent has used the considerable reputation of the Complainant’s trademark FXCM to misleadingly divert consumers to a webpage offering identical financial services to that of Complainant. In this regard, Complainant alleges that Respondent’s use of the disputed domain name shows that it attempts to make financial gain through the website by creating an illusion of affiliation with the FXCM brand and is therefore not making a noncommercial or fair use of the disputed domain name, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

At last, Complainant states that the disputed domain name was registered and is being used in bad faith.

Firstly, Complainant affirms that the content of the page hosted by the disputed domain name falsely insinuates affiliation with Complainant throughout, including a link to Complainant’s official page on the United Kingdom “Companies House” register, which is extremely deceptive. According to Complainant, further attempts of deception include the mention of Complainant’s United Kingdom address at the bottom of the webpage. Moreover, Respondent is using elements of Complainant’s logo, such as color and style, as a way to impersonate the company or to seem affiliated to it in some way.

Furthermore, Complainant claims that the well-known character and reputation of the trademark FXCM in the Forex and CFD trading market, added to the fact that Respondent offers services identical to those offered by Complainant through a website with several references to Complainant, makes it very unlikely that Respondent had no knowledge of the company when it registered the disputed domain name.

This way, Complainant claims that Respondent was aware of his lack of rights or legitimate interests in the disputed domain name and only registered it for the purpose of creating confusion with Complainant’s trademark, seeking to divert or mislead third parties for its own benefit.

Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark rights to the trademark FXCM, registered in many jurisdictions, and that the disputed domain name incorporates such trademark in its entirety, with the sole addition of term “limited”, which does not prevent the finding of a confusing similarity.

Thus, the Panel finds that the disputed domain name <fxcmlimited.com> is confusingly similar to Complainant’s trademark and so the requirement of the first element of paragraph 4(a) of the Policy is entirely satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

Firstly, the Panel finds that evidence brought by Complainant was sufficient to demonstrate that Respondent was clearly aware of Complainant’s rights to the trademark FXCM at the time of registration of the disputed domain name, especially the following (i) the company has a high notoriety in the Forex and CFD trading market worldwide; (ii) the disputed domain name was registered by Respondent on March 30, 2021, many years after the registration of Complainant’s trade name, domain name <fxcm.com> and trademarks listed in section 4 of this decision; and (iii) through the disputed domain name Respondent offers similar services as to those offered by Complainant, while making several references to Complainant, such as the company’s address in the United Kingdom and the company’s official page on the United Kingdom “Companies House” register.

Moreover, the Panel draws attention to the fact that on May 4, 2021 Complainant’s representatives sent a cease and desist letter to Respondent in order to put him on notice of Complainant’s rights to the mark FXCM, with a view to resolve the matter amicably. The Panel finds that Respondent’s reply to such letter, indicating that it would comply with taking down of the disputed domain name under the payment of a compensation, affirms Respondent’s lack of rights over the disputed domain name, and that it intends to take undue advantages from the registration of the disputed domain name, which supports a finding of bad faith.

In addition, the Panel observes that Respondent has engaged in at least two other UDRP cases, both of which resulted in transfer of the domain names to the complainant, showing Respondent’s clear pattern of bad faith in creating websites that mimic financial service brands to defraud online users. See BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, dineroQ / Mack John, wikina / John Terry, Georgia Group of Company, WIPO Case No. D2021-0538 and BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mack John, Wikina, WIPO Case No. D2020-2811.

Accordingly, the Panel believes that Respondent intentionally used the commercial value and goodwill of Complainant’s brand to confuse online users for its own gain through the perpetration of illegitimate financial offerings. In fact, by the addition of the word “limited” the risk of confusion becomes even more likely, considering that Complainant has revealed that it is at times referred to as “FXCM Ltd” (“Ltd” being an abbreviation for “Limited”). Considering the sensitive nature of Complainant’s business, the Panel agrees that Respondent’s actions are particularly egregious. Online users could face severe financial loss due to Respondent’s registration and use of the disputed domain name or even disclose sensitive personal information to Respondent.

Lastly, the Panel notes that the fact that Respondent did not present a response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Given all the above mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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 <fxcmlimited.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: September 5, 2021