WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. Fu Yu Bin (符誉膑) and Duan Chun Na ( 段 春 娜)

Case No. D2020-0978

1. The Parties

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

The Respondents are Fu Yu Bin (符誉膑) and Duan Chun Na (段春娜), China.

2. The Domain Name and Registrars

The disputed domain name <fuhuichinese.top> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), the disputed domain name <fxcm-uk.net> 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 April 21, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2020 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 in English on April 24, 2020.

On April 23, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on April 24, 2020. The Respondents did not comment on the language of the proceeding.

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 Respondents of the Complaint in English and Chinese, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 20, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 27, 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 was incorporated in the State of Delaware in 1999 and is one of the early developers of online foreign exchange trading. The Complainant operates many offices worldwide and has an official website at “www.fxcm.com”. The Complainant has a mark for 福汇 (Pinyin: fu hui) as its Chinese equivalent for the FXCM mark, which has been extensively used for its Chinese-language marketing. The Complainant also claims that it has received many awards for its provision of brokerage and trade-related services, and that its 20th Anniversary Campaign was widely covered in Chinese-language media.

The Complainant owns a portfolio of trademark registrations (word marks) for FXCM, for instance, the European Union Trade Mark registration number 003955523, registered on November 3, 2005. The Complainant also owns the Chinese equivalent trademark registrations for 福汇and its variations, such as the Hong Kong, China trademark registration number 305023115 for 福汇, registered on February 25, 2020, and the Chinese trademark registration number 30673851 for FUHUIGLOBAL, registered on April 7, 2019. The disputed domain name <fxcm-uk.net> was registered on May 12, 2019, while the disputed domain name <fuhuichinese.top> was registered on November 12, 2019. The Complainant submits evidence that the disputed domain names directed to active websites with very similar or even the same contents that imitated the Complainant’s official website by using the Complainant’s trademarks and copyrighted images, and offered the Complainant’s core services by claiming its affiliation with the Complainant. However, on the date of this decision, the disputed domain names both lead to inactive webpages.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for FXCM and 福汇 respectively, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

The Complainant claims that its trademarks are famous and well regarded in the foreign exchange trading sector, and provides evidence of a prior decision in a UDRP proceeding (FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111), which state that the Complainant’s FXCM trademark is distinctive and well-known in its industry. Moreover, the Complainant provides evidence that the disputed domain names were linked to active websites that took unfair advantage of its trademarks and high reputation. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes registration and use in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondents

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

6. Discussion and Findings

6.1 First Preliminary Issue: Consolidation of Respondents

The Complainant requests consolidation in regard to the Respondents, as the disputed domain names are currently owned by multiple registrants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.2: “where a complaint is filed against multiple Respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the fact that the disputed domain names once directed to websites with very similar or even identical contents (before they were taken offline); the fact that they are registered with registrars from the same group of companies and hosted on the same Internet service provider; the fact that they target the Complainant’s English trademark FXCM and its Chinese equivalents respectively; and the fact that they were registered within a six month period between May 12, 2019 and November 12, 2019, and the Respondents’ address details were different. The Panel notes that the Respondents did not submit any arguments and did not contest the request for consolidation.

In view of these elements, the Panel rules that the websites once linked to the disputed domain names are under common control, that in this case consolidation would be fair and equitable to all parties involved and would safeguard procedural efficiency. Accordingly, the Panel will hereinafter refer to the Respondents as “the Respondent”.

6.2. Second Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 Complainant claims that to its best knowledge the language of the Registration Agreements is Chinese, but the Complaint is filed in English. On April 23, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of the proceeding be English on April 24, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the disputed domain names once directed to websites with English language option (before they were taken offline), which shows the Respondent has sufficient ability communicating in English; and the fact that Chinese as the language of proceeding could lead to unwarranted delay and costs for the Complainant. This is especially with the current international pandemic environment, there is a public risk for further delayed consideration of the current case. In view of all these elements, the Panel rules that the language of proceeding shall be English.

6.3. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Complainant claims the disputed domain name <fxcm-uk.net> is confusingly similar to the Complainant’s registered trademark FXCM, and the disputed domain name <fuhuichinese.top> is confusingly similar to the Complainant’s registered trademark 福汇. The Panel finds that the Complainant has shown that it has valid rights in the marks FXCM, FUHUIGLOBAL, and 福汇based on its intensive use and registration of the same as trademarks.

Moreover, as to confusing similarity, the disputed domain name <fxcm-uk.net> consists of the Complainant’s registered trademark FXCM, followed by the part “-uk”, while the disputed domain name <fuhuichinese.top> contains the distinctive part of Complainant’s trademark FUHUIGLOBAL, and the Pinyin transliteration of the Complainant’s trademark 福汇 in its entirety, followed by the part “chinese”. The applicable Top-Level Domains (“.net” and “.top” in this case) are viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview 3.0, section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “[…]in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The Panel concludes that the disputed domain name <fxcm-uk.net> contains the entirety of the Complainant’s trademark FXCM. The disputed domain name <fuhuichinese.top> contains the entirety of the Pinyin transliteration of the Complainant’s trademark 福汇 and at least the dominant feature “fuhui” of the Complainant’s trademark FUHUIGLOBAL is recognizable in it. It is the Panel’s view that the addition of the merely dictionary components “-uk” and “chinese” does not avert the confusing similarity between the disputed domain names and the Complainant’s trademarks. In addition, the content of the websites to which the disputed domain names used to resolve, further confirms the confusing similarity – there is no doubt that the Respondent was seeking to target the Complainant’s FXCM and 福汇 trademarks, as both of them prominently appear in the top left corner and in various other places throughout the websites. See WIPO Overview 3.0, section 1.15.

Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

Based on the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain names once directed to active websites that imitated the Complainant’s official website by using the Complainant’s trademarks and copyrighted images, and offered the Complainant’s core services by claiming its affiliation with the Complainant (before they were taken offline). This shows the Respondent’s intention to misleadingly divert consumers most likely for its own commercial gain to its websites linked to the disputed domain names, by taking unfair advantage of the goodwill and reputation of the Complainant’s well-known trademarks. Currently, the disputed domain names both lead to inactive webpages.

Furthermore, the Panel notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademarks, carry a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain names.

Based on the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain names was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain names. Given the distinctiveness and fame of the Complainant’s trademarks, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain names, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.

Moreover, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned registered trademarks in FXCM and FUHUIGLOBAL, and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names.

As to use of the disputed domain names in bad faith, the disputed domain names once directed to active websites that imitated the Complainant’s official website by using the Complainant’s trademarks and copyrighted images, and offered the Complainant’s core services by claiming its affiliation with the Complainant (including a statement which claims: “This is FXCM’s global Chinese website”). This indicates the Respondent’s clear bad faith in freeriding the Complainant’s trademarks and reputation to attract Internet users most likely for the Respondent’s commercial gain. On the date of this decision, the disputed domain names both resolve to inactive webpages. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain names to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, the fact that the Respondent clearly intended to mislead consumers into believing that the disputed domain names led to the Complainant’s official websites by falsely claiming to be part of the Complainant’s business most likely for commercial gain, and the Respondent’s unauthorized use on the websites of the Complainant’s trademarks, logos and images protected by copyright. Based on the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names <fuhuichinese.top> and <fxcm-uk.net> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: June 9, 2020