WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. GlobalFunds Odilli / Jamie Rahman, Swift Trade / FXCM Trading / FXCM TRADING, FXCM TRADING Ltd.

Case No. D2019-2284

1. The Parties

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

The Respondents are GlobalFunds Odilli, Maldives / Jamie Rahman, Swift Trade, United Kingdom / FXCM Trading, United Kingdom / FXCM TRADING, FXCM TRADING Ltd., United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <fxcmtrade.com> is registered with the registrar, NameCheap, Inc.

The disputed domain names <fxcm-trade.net>, <fxcmtrades.com>, and <fxcm-trading.net> (collectively, the “Domain Names”) are registered with the registrar, Shinjiru Technology Sdn Bhd (collectively the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 19 and 20, 2019, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2019, 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 amended Complaint on September 27, 2019.

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 October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2019.

The Center appointed Karen Fong as the sole panelist in this matter on November 8, 2019. 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 London-based company founded in 1999, operating as a retail broker in the foreign exchange (“Forex”) market. It is a leading provider of online Forex trading, CFD (contract for difference) trading and related services. The Complainant’s services aim 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. The Complainant also offers educational courses on Forex trading. The Complainant has received awards and accolades for its services and has acquired a reputation in the Forex and CFD marketplaces.

The Complainant provides its services under the trade mark FXCM. Details of the FXCM trade mark (the “Trade Mark”) are shown below:

The Complainant predominantly operates from its main website which is connected to the domain name <fxcm.com>. The Complainant also has a portfolio of domain names consisting of the Trade Mark. They include the following:

<fxcm.asia>, <fxcm.ba>, <fxcm.bi>, <fxcm.blog>, <fxcm.bo>, <fxcm.broker>, <fxcm.bs>, <fxcm.capital>, <fxcm.ceo>, <fxcm.co.dk> and <fxcm.co.uk>.

The Complainant also has a social media presence under the Trade Mark including:

- Facebook: “www.facebook.com/FXCM”
- Twitter: “twitter.com/fxcm”
- YouTube: “www.youtube.com/fxcm”

The Complaint involves four (4) Domain Names which are registered to multiple Respondents as detailed below:

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network.

The basis of its belief that the registrants are related and under management and common control of a single network are set out in the comments in the table above.

B. Respondent

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

6. Preliminary Procedural Issue - Consolidation of the Proceeding

Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:

1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.

2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.

The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity or network and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant’s marks and harming consumers.

Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. The Respondents may therefore be referred to as the Respondent.

7. Discussion and Findings

7.1. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.

7.2. Substantive Analysis

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark is reproduced in its entirety in the Domain Names. Every Domain Name comprises the Trade Mark, FXCM, and some variation of the term “trade” – trade, trades and trading as well as the inclusion of a hyphen between FXCM and trade/trading in respect of Domain Names 3 and 4.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the various generic domain suffixes. For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant submits that to the best of its knowledge the Respondent does not own any trade mark rights in the Trade Marks which comprise the Domain Names. Neither has the Complainant granted any license to use the Domains Names featuring the Trade Mark. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, and are not making any legitimate noncommercial or fair use of the Domain Names. Domain Name 3 is being passively held and therefore does not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.

The active websites have been set up to create an impression of connection and association with the Complainant. In fact, there is a risk that some of the websites are being used for a phishing scheme as they provide for users to provide personal details to open an account in which deposits are requested for. Such use is not considered bona fide nor legitimate noncommercial fair use.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register so many Domain Names comprising the Trade Mark which it has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The earliest trade mark registration of the Complainant predates the registration of the Domain Names by 17 years. Domain Names 1, 2 and 4 purport to offer identical services to the Complainant and registering so many Domain Names with different versions or combinations of the Trade Marks confirms its awareness and knowledge of the Trade Mark. Further, the website connected to Domain Name 4 even bears the Complainant’s logo and purports to be a branch of the Complainant. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Names.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.

The Domain Names are also used in bad faith. The reasons are as follows:

(1) The active websites which purport to offer identical services to the Complainant could potentially divert Internet users and potential customers away from the Complainant and disrupt the business of the Complainant while potentially harming consumers as the Domain Names bear the Trade Mark.

(2) Such use by the Respondent shows an intention on the part of the Respondent to attract for commercial gain by misleading Internet users into believing that the websites are authorised by or somehow connected to the Complainant.

(3) The active websites could potentially be used as part of a phishing scheme as explained above.

(4) Even in the case of the inactive Domain Name, it does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the Respondent is acting in bad faith. UDRP panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. In this case, inferences of bad faith use is found in the following ̶ as stated in the finding in favour of consolidation, the Respondent is clearly attempting to hide its identity, these Domain Names belong to the same registrant who also use Domain Names bearing the Trade Marks to mislead Internet users, and the Respondent has failed to file a Response.

From the above, the Panel concludes that the Domain Names were registered and are being used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <fxcmtrade.com>, <fxcm-trade.net>, <fxcmtrades.com>, and <fxcm-trading.net> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: November 26, 2019