WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXDirectDealer, LLC v. trading sunfance

Case No. D2019-3106

1. The Parties

The Complainant is FXDirectDealer, LLC, United States of America (“United States”), represented by Kolitch Romano LLP, United States.

The Respondent is “trading sunfance”, United States.

2. The Domain Name and Registrar

The disputed domain name <fxddasian.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 December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020.

The Center appointed Joseph Simone as the sole panelist in this matter on January 23, 2020. 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, is an American financial services company that has been using its trademark FXDD in connection with the offering of a variety of goods and services since 2002, including through its websites “www.fxdd.com” and “www.fxddasia.com”.

Complainant owns a series of trademark registrations incorporating FXDD worldwide, including the following:

- FXDD, United States Trademark Registration No. 4418706, registered on October 15, 2013 in classes 9, 36 and 41;

- FXDD and Device, United States Trademark Registration No. 3991011, registered on July 5, 2011 in classes 9, 36 and 41;

- FXDD, International Trademark Registration No. 1175697, registered on August 7, 2013 in classes 9, 36 and 41;

- FXDD and Device, International Trademark Registration No. 1125315, registered on May 21, 2012 in classes 9, 36 and 41;

- FXDD YOUR MONEY, EMPOWERED and Device, United States Trademark Registration No. 4454062, registered on December 24, 2013, in class 41;

- FXDDCLOUD, United States Trademark Registration No. 4459224, registered on December 31, 2013, in class 42;

- FXDD FRONTIER INSTITUTIONAL SERVICES and Device, United States Trademark Registration No. 4487694, registered on February 25, 2014, in class 36; and

- FXDD FRONTIER and Device, United States Trademark Registration No. 4487696, registered on February 25, 2014, in class 36.

The disputed domain name <fxddasian.com> was registered on May 31, 2018, and resolves to an active website that prominently displays the Complainant’s registered trademark FXDD and Device. The website contains certain information about the Complainant that is true, offers downloadable forms for customers which appear to be based on the Complainant’s actual forms, and even redirects users to the Complainant’s actual website “www.fxdd.com” when consumers seek to translate the website’s content into other languages. It also provides a customer service email address unrelated to the Complainant through which it directs consumers to submit personal details.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the three elements for transfer of the disputed domain name have been satisfied in the present case.

First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its FXDD series of trademarks and domain names <fxdd.com> and <fxddasia.com>, as the disputed domain name consists of “fxdd” in its entirety and an additional geographic term – “asian”. Further, the disputed domain name incorporates a minor typographical error or variation of the Complainant’s domain name <fxddasia.com>.

Next, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Respondent is neither sponsored by nor affiliated with the Complainant, and never received any license, authorization or permission from the Complainant to use the FXDD marks in any form. Moreover, the Respondent is not commonly known by the disputed domain name, or any other name incorporating the letters “fxdd”. Rather, the website to which the disputed domain name resolves was set up primarily for the purpose of disrupting and diverting the business of the Complainant, as evidenced by the confusingly similar disputed domain name and the prominent display of the Complainant’s trademark and various information on the website.

Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. Due to the well-known status and extensive use of the FXDD trademarks by the Complainant prior to the registration date of the disputed domain name, the Respondent knew or should have known of the Complainant and its services. This is supported by the Respondent’s registering a domain name that is confusingly similar to the Complainant’s FXDD mark, as well as its use of the Complainant’s registered FXDD marks and various information on the associated website to represent itself as being, or at least connected to, the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant has provided evidence of valid trademark registrations for FXDD, FXDD and Device, among others, thereby showing that it has rights in the trademarks.

The test for whether a domain name is identical or confusingly similar to the Complainant’s trademark is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g., F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether geographical, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on the assessment of the second and third elements (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284).

In the case at hand, the disputed domain name incorporates the Complainant’s trademark FXDD in its entirety, and contains the distinctive element “FXDD” in the series of FXDD-formative marks to which the Complainant has rights. The mere addition of “asian” – while not a geographical term per se – cannot prevent a finding of confusing similarity, especially in light of the Complainant’s domain name <fxddasia.com>, which differs by only one letter to the disputed domain name.

Therefore, the Panel concludes that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).

The Complainant states that it is not affiliated with, and has never authorized, the Respondent to register the disputed domain name or use its registered trademarks. There is also no evidence that the Respondent is commonly known by the disputed domain names. Thus, where the disputed domain name contains the Complainant’s distinctive trademark as its dominant element and differs from one of the Complainant’s domain names by only one letter, it is difficult to conceive of any rights or legitimate interests the Respondent could have in the disputed domain name, especially in the absence of any explanation on the Respondent’s part.

Rather, the evidence submitted by the Complainant indicates that the Respondent is using the disputed domain name to operate a website that appears to offer financial services of a company named “Fxdd”, using the Complainant’s trademarks and presenting information which suggests that it is in fact the Complainant. The website then directs users to a customer service email address that is unrelated to the Complainant, arguably in a fraudulent manner.

Such behavior does not constitute legitimate noncommercial or fair use of a domain name within the meaning of the Policy.

Therefore, the Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

Finally, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Section 3.1.4 of the WIPO Overview 3.0 states:

“the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0).

In the present case, the disputed domain name is comprised of the Complainant’s distinctive trademark FXDD in its entirety and the additional descriptive term “asian”. It was registered several years after the Complainant’s FXDD series trademarks and more than a dozen years after the first use of “Fxdd” in commerce.

Since its establishment in 2002, the Complainant has invested significant resources in developing its business and brand name, resulting in a global financial service with significant customer goodwill that conducts business through the websites “www.fxdd.com” and “www.fxddasia.com”.

Given the foregoing, the Panel concludes that the Respondent knew of the Complainant’s pre-existing rights when it registered the disputed domain name and did so with bad faith.

Furthermore, bad faith under the Policy is understood to include circumstances where:

“the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location” (paragraph 4(b) (iv) of the Policy).

The Complainant has submitted ample evidence which demonstrates that the Respondent, through the disputed domain name, seeks to attract Internet users to its website and away from the Complainant by creating a false affiliation with the Complainant. The Respondent uses the disputed domain name to offer financial services of a company named “Fxdd”, which coincidentally shares the same logo, history, business address and phone number as the Complainant, and provides customers with downloadable forms that are identical to or based on the Complainant’s forms. The Respondent has established a customer service email address unrelated to the Complainant through which it asks customers to submit personal details, presumably for its own commercial use and eventually illegitimate commercial gain.

In view of the foregoing, it is clear that the Respondent registered the disputed domain name with the Complainant’s business in mind, and with the purpose of diverting consumers away from the Complainant. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Therefore, the final requirement of the UDRP has been met.

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 <fxddasian.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: February 6, 2020