WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FxPro Financial Services Ltd. v. Mohammad Shekh Sliman, 5Markets

Case No. D2016-0984

1. The Parties

The Complainant is FxPro Financial Services Ltd. of Ypsonas, Cyprus, represented by Venner Shipley LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).

The Respondent is Mohammad Shekh Sliman, 5Markets of London, UK.

2. The Domain Name and Registrar

The disputed domain name <fxprotrade.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2016. The Center sent an email communication on May 31, 2016 stating that some deficiencies were not addressed in the amendment to the Complaint submitted. Complainant submitted an Amended Complaint on June 10, 2016.

The Center verified that the Complaint together with the amendment to the Complaint and the Amended Complaint (hereinafter referred altogether as 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”).

On June 10, 2016, the Respondent sent an email communication to the Center referring to the disclosure by the Registrar of its personal data. The Center acknowledged receipt on June 10, 2016 indicating that it is currently undergoing a formality compliance review of the Complaint and referring to the Center’s website for more information about the proceeding or the process to submit a Response.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel appointment on July 5, 2016.

The Center appointed Alexandre Nappey as the sole panelist in this matter on July 18, 2016. 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 Cypriot company incorporated in 2006 and which has become a leading international exchange and financial services provider since then.

The Complainant is the registered owner of the following trademarks:

- FXPRO European Union trademark No. 006460349, registered on October 3, 2008 for the following services in class 36: “Insurance; financial affairs; monetary affairs; real estate affairs”;

- FXPROInternational trademark No. 1048297, registered on April 26, 2010 for the following services in class 36: “Financial services via the Internet”.

The Complainant holds the domain name <fxpro.com> registered on March 26, 2002 which resolves to the Complainant’s website.

The disputed domain name <fxprotrade.com> was registered on June 30, 2014 in the name of Mohammad Shekh Sliman with an address in London, UK.

5. Parties’ Contentions

A. Complainant

By virtue of being licensed and regulated by the Cyprus Securities and Exchange Commission the Complainant declares that it is authorized to provide investment services anywhere within the European Union.

The Complainant owns a subsidiary named FXPRO UK Limited incorporated in 2009 and which is licensed and regulated in the UK by the Financial Conduct Authority. This company has an office in London.

Since its launch, the Complainant has spent significant sums of money promoting the FXPRO name, brand and trademarks throughout the world, through sponsorship of several major sport events, as:

- partnership with the BMW Sauber Formula 1 team in 2009,

- sponsorship of the World Rally Championship in 2009,

- sponsorship of Fulham and Aston Villa Football Clubs in the English Premier League in 2010,

- sponsorship of the Virgin Formula 1 team in 2010,

- sponsorship of the Asian Confederation Champions League football tournament in 2011,

- the Naming Rights Partner of the Australian Conference in the Super Rugby tournament between 2011 to 2015,

- sponsorship of Monaco Football Club in the French League in 2011,

- sponsorship of Monaco Yacht club,

- sponsorship of the Monte Carlo annual Volley Ball Tournament from 2012 onwards.

The combined global audience for the events that the Complainant sponsors is in the hundreds of millions worldwide.

As a result of the aforementioned press coverage and awards, and of its continued use of the trademark FXPRO internationally, the Complainant claims that it has built up and now owns significant goodwill in this name in relation to the services it provides and the FXPRO name is recognized by the relevant public as indicating its services.

1. The disputed domain name <fxprotrade.com> is very similar to its earlier trademarks FXPRO, to the point of creating confusion

The Complainant explains that the disputed domain name is composed of the first element “FXPRO” which is phonetically and visually identical to the earlier European and international trademarks that it owns.

Therefore the disputed domain name <fxprotrade.com> incorporates the Complainant’s earlier trademarks FXPRO in their entirety.

The added “trade” element is descriptive of the financial trading services and facilities provided by the Complainant to its clients and of its business and does not therefore distinguish the disputed domain name from the earlier trademarks of the Complainant.

Moreover, it reinforces the impression that the disputed domain name is owned by or connected to the Complainant.

Consequently, the disputed domain name is confusingly similar to an extremely high degree to the earlier trademarks FXPRO owned by the Complainant.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant explains that the Respondent has no registered rights in the “fxpro” name or the “fxprotrade” name.

The Complainant has not authorized, licensed or otherwise consented to the Respondent any use of its trademarks FXPRO by incorporation into the domain name.

3. The disputed domain name was registered and is being used in bad faith

The Complainant has not in any way consented to the registration of the disputed domain name.

Since the Complainant has been operating in the UK since 2010 on a very significant scale, the Respondent was aware of its earlier trademarks FXPRO prior to the registration of the disputed domain name in 2014.

By registering and using the disputed domain name, the Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s earlier trademarks.

The Respondent, through its registration and use of the disputed domain name, is relying on the substantial reputation and goodwill that the Complainant has built from its establishment in 2006 and is seeking to benefit financially from such deception.

There is a real and severe risk that an internet user guessing the URL for the Complainant’s own website would use the disputed domain name for that purpose.

On the website attached to the disputed domain name appears the following statement: “FX Protrade is licensed as a financial brokerage in EU, and are obliged to the regulations of the Cyprus Securities and Stock Exchange, and has the adoption of the Financial Services Authority and the Bank of France and Federal financial control”.

But, an inspection of the Register of Companies of England and Wales reveals that the only company having the name FX Protrade Ltd was dissolved on December 27, 2011.

The Financial Conduct Authority’s website states that FX Protrade Ltd is not authorized and accords it the following status: “This is an appointed representative (AR) that is no longer an agent of an authorized firm. Do not start to do business with an AR that is listed as ‘former’.”

According to articles on various websites dated May 2016, Hong Kong’s Securities and Futures Commission (“SFC”) issued a warning against the forex broker operating online as “www.fxprotrade.com”.

The SFC advised potential investors not to do business with the disputed domain name <fxprotrade.com>, pointing out that unlicensed entities often use names similar to legitimate companies to confuse investors.

In addition, the Czech national bank has issued a warning that the Respondent is not authorized to provide investment or any other services in the Czech Republic.

In conclusion:

- the website attached to the disputed domain name contains numerous false claims;

- despite the UK contact address given and the claim made on the website, FX Protrade Ltd is not authorized by the UK Financial Conduct Authority;

- there is in fact no UK company named “FX Protrade” as claimed on the disputed website;

- the regulatory bodies in the Czech Republic and Hong Kong have gone so far as to publicly warn investors not to do business with the forex broker operating online as “www.fxprotrade.com”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) The disputed domain name is 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 name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in FXPRO, which predate the registration of the disputed domain name.

The Panel finds that the disputed domain name <fxprotrade.com> is confusingly similar to the registered FXPRO trademarks owned by the Complainant.

Indeed, the disputed domain name incorporates the entirety of the Complainant’s FXPRO trademarks.

As the “fxpro” element constitutes the sole distinctive element of the disputed domain name, the addition of the descriptive term “trade” which is very closely related to the Complainant’s business and the generic Top-Level Domain “.com.” does not avoid confusion with the Complainant’s earlier trademarks.

See Deutsche Börse AG v. EurexTrade, WIPO Case No. D2012-0261: “Here, the additional term (i.e. ‘trade’) refers to a type of activity in which Complainant trademark owner is commonly engaged. The additional term does not distinguish the disputed domain name from Complainant and its trademark, and, in this Panel’s view, may serve to reinforce or exacerbate confusion among Internet users as to an association between Complainant, on one hand, and Respondent and its website, on the other.”

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to demonstrate its rights or legitimate interests.

The Complainant has stated that:

- the Respondent has no registered trademark right in the “fxpro” name or “fxprotrade” name;

- it has not authorized, licensed or consented to the Respondent any use of its FXPRO trademark.

Furthermore, the Complainant has submitted a printout from the website linked to the disputed domain name showing that the following mentions appear under the heading “About the company”:

“FX Protrade is a British company”

“Contact us: 17 St. Peters Square, Fleetwood, Lancashire, UNITED KINGDOM, FY7 6EB”

Whereas the Complainant also submitted a printout from the Register of Companies of England and Wales which reveals that the only company named FX Protrade Ltd and located at the same address was dissolved on December 27, 2011, before the registration of the disputed domain name dated June 30, 2014.

At the date of registration of the disputed domain name, there was no company registered in UK named FX Protrade Ltd.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

As the Respondent has not provided otherwise, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant has submitted numerous evidence showing significant promotion of its trademark FXPRO all over the world, especially through sponsorship of several major sport events, with coverage of hundred millions of people as a consequence.

The Panel then infers that the Respondent likely had knowledge of the Complainant’s mark at the time he registered the disputed domain name, or at the very least could not reasonably ignore the Complainant and its trademarks.

The Complainant has submitted a printout from the website linked to the disputed domain name which shows that the following mention appears: “FX Protrade is licensed as a financial brokerage in EU, and are obliged to the regulations of the Cyprus Securities and Stock Exchange, and has the adoption of the Financial Services Authority and the Bank of France and Federal financial control”.

Whereas the Complainant explained that the “Financial Services Authority” changed its name three years ago to the “Financial Conduct Authority” and also submitted a printout from the website of this Authority indicating about FX PROTRADE: “Status: No longer registered as an Appointed Representative. This is an appointed representative (AR) that is no longer an agent of an authorized firm. Do not start to do business with an AR that is listed as ‘former’.”

The Complainant has also submitted printouts showing an alert from:

- the Hong Kong’s Securities and Futures Commission (SFC) against FX Protrade Ltd and its website “www.fxprotrade.com” explaining that this company is “unlicensed to provide its services in

Hong Kong and to Hong Kong investors”. The SFC notes that “unlicensed entities often use names similar to legitimate companies to confuse investors”;

- the Czech National Bank against FX Protrade Ltd and its website “www.fxprotrade.com” explaining that this company has “no authorization to provide investment or any other services on the financial market in the Czech Republic and is not supervised by the CNB”.

In the light of the above, it appears that, by using the disputed domain name, the Respondent tried to create a likelihood of confusion with the Complainant’s earlier trademarks FXPRO and to financially benefit from its reputation or to disrupt the Complainant’s business while portraying itself as an entity that appears to no longer exist.

The Panel finds that the third requirement of paragraph 4(a) of the Policy is fulfilled.

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, <fxprotrade.com>, be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: July 28, 2016