WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. Registration Private, Domains By Proxy, LLC / Gian Reid

Case No. D2020-2462

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Gian Reid, Philippines.

2. The Domain Name and Registrar

The disputed domain name <fxcm-ex.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 September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2020, 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 the Complainant on September 28, 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 on September 28, 2020.

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 September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020.

October 5, 2020, the Respondent sent two informal email communications to the Center indicating he would not use the disputed domain name any more, and would delete it. On the same day, the Center invited the Complainant to comment whether it would like to explore settlement with the Respondent. At the request of the Complainant, the proceeding was suspended from October 5, 2020 until November 4, 2020, for purposes of settlement discussions between the Parties concerning the disputed domain name. On October 27, 2020, the Complainant requested that the proceeding be reinstituted. On the same day, the Center confirmed the reinstitution of the proceeding, and the due date for Response was extended until November 4, 2020. On November 5, 2020, the Center informed the Parties that it would proceed to appoint the Administrative Panel.

The Center appointed Jane Seager as the sole panelist in this matter on November 12, 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

Founded in 1999, the Complainant is a company based in the United Kingdom, operating as a retail broker in the foreign exchange market. The Complainant maintains offices in locations throughout the world, including Australia, France, Germany, Hong Kong, China, and South Africa. For use in connection with its foreign exchange services, the Complainant has registered several trademarks for FXCM, including:

- United States Trademark Registration No. 2620953, FXCM, registered on September 17, 2002;
- European Union Trade Mark Registration No. 003955523, FXCM, registered on November 3, 2005; and
- Australian Trademark Registration No. 1093998, FXCM, registered on June 13, 2006.

The Complainant has also registered several domain names comprising its FXCM trademark including <fxcm.com>, from which it operates its main website.

The disputed domain name was registered using a privacy service on May 27, 2020. At the time of filing of the Complaint, the disputed domain name resolved to a website consisting of a login page, prominently displaying the Complainant’s FXCM trademark and logo, requesting the Internet user to enter his or her phone number or email address, and password. The website to which the disputed domain name previously resolved also appears to have included links to services including a “quote center”, “transactions”, and to “make a new subscription”. At the time of this decision, the disputed domain name no longer resolves to an active website.

On August 13, 2020, the Complainant’s representatives sent a cease-and-desist letter to the Respondent via the privacy service with which the disputed domain name was registered, putting the Respondent on notice of the Complainant’s rights in the FXCM trademark, and requesting transfer of the disputed domain name. The Respondent did not reply to the Complainant’s cease-and-desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the FXCM trademark. The Complainant submits that the disputed domain name is confusingly similar to its FXCM trademark, in that it contains the Complainant’s trademark, with the addition of “-ex”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has not received any licence from the Complainant to make use of domain names featuring its FXCM trademark. The Complainant submits that the Respondent’s use of the disputed domain name to resolve to a website that purports to be a trading platform is designed to insinuate affiliation or endorsement by the Complainant, causing confusion and misleading Internet users, and does not amount to a bona fide offering of goods or services. The Complainant asserts that there is no evidence of the Respondent having acquired any trademark rights in FXCM, and that the Respondent is not commonly known under “Fxcm”. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name in a misleading manner to collect personal information. The Complainant further notes that the website at the disputed domain name has shown evidence of being used in connection with online trading, in competition with the Complainant’s services. The Complainant submits that the Respondent’s use of the Complainant’s trademark to mislead Internet users as to the legitimacy and endorsement of the Respondent’s website does not amount to fair use of the disputed domain name.

The Complainant notes that the earliest registration of its FXCM trademark predates the registration of the disputed domain name by 18 years, and infers from the Respondent’s placement of the Complainant’s trademark and logo on the website to which the disputed domain name resolves, that the Respondent was aware of the Complainant and its commercial activities. The Complainant further submits that by advertising services that fall within the same sector as those offered by the Complainant, the Respondent has used the disputed domain name to attract Internet users seeking the Complainant, for commercial gain. The Complainant argues that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter is further evidence of bad faith. For the foregoing reasons, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

In an informal email communication of October 5, 2020, the Respondent stated:

“Hello sir,

Please reply the complainant, we will not use the domain any more, and we will delete the domain.”

The Respondent sent another similar email communication on the same day. However, the Respondent did not submit any substantive reply to the Complaint.

6. Discussion and Findings

6.1. Preliminary Procedural Matter: Consent to Remedy

The Panel notes that in his informal communications, the Respondent offered to delete the disputed domain name. The Panel also notes that the website at the disputed domain name appears to have been taken down.

Settlement discussions between the Parties did not result in the voluntary transfer of the disputed domain name, therefore the Complainant requested the reinstitution of the proceeding.

In the absence of any further communications from the Respondent, the Panel considers it appropriate to proceed to issue a decision on the merits.

6.2. Substantive Matters

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the FXCM trademark, the registration details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s FXCM trademark as its leading element, followed by the letters “ex”, separated from the Complainant’s trademark by a hyphen. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel is of the view that the addition of the element “-ex” does not prevent confusing similarity with the Complainant’s trademark, which remains clearly identifiable in the disputed domain name.

The generic Top-Level Domain “.com” is viewed as a standard registration requirement and may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted in WIPO Overview 3.0, section 2.1:

“While 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.”

There appears to be no relationship between the Parties, nor has any licence or other authorization been granted for the Respondent to make use of the Complainant’s trademark, in a domain name or otherwise.

At the time of filing of the Complaint, the disputed domain name resolved to a website that made prominent use of the Complainant’s trademark and logo, inviting Internet users to sign up or log into a platform accessible via the Respondent’s website. The Respondent’s website also appears to have previously purported to offer services that have at least some overlap with those offered by the Complainant. Noting that the Respondent’s website did not contain any disclaimer or similar statement, clarifying its non-affiliation with the Complainant, the Panel finds it more likely than not that the Respondent intended to create a misleading impression that the website at the disputed domain name was either operated or endorsed by the Complainant. The Panel does not consider such use to amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent is identified in the WhoIs record as “Gian Reid”, which bears no resemblance to the disputed domain name whatsoever. The Respondent has not produced any evidence that he is the owner of any trademarks for “fxcm” or “fxcm-ex”, as reflected in the disputed domain name. The Respondent has not made any use of the disputed domain name, independent from the Complainant’s trademark, that would give rise to any reputation in the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.

As noted above, the Respondent appears to have made use of the disputed domain name to mislead Internet users into believing that the website at the disputed domain name was operated or endorsed by the Complainant. Such misleading use of the disputed domain name does not amount to legitimate noncommercial or fair use as contemplated by paragraph 4(c)(iii) of the Policy.

Considering the above, the Panel finds that the Complainant has established a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward with evidence to rebut the Complainant’s prima facie case. The Complainant is therefore deemed to have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The earliest registration of the Complainant’s trademark predates the registration of the disputed domain name by some 18 years. The Complainant has provided evidence of its international presence and widespread use of the FXCM trademark. In light of this, and noting the prominent display of the Complainant’s trademark and logo on the Respondent’s website, the Panel finds that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights in the FXCM trademark, having no authorization to do so, with the intention of creating a misleading impression of association between the disputed domain name and the Complainant, in bad faith.

As noted above, at the time of filing of the Complaint, the disputed domain name resolved to a website displaying the Complainant’s trademark and logo, inviting Internet users to log in or create an account to access a platform via the Respondent’s website. There is a real risk that Internet users who accessed the Respondent’s website would be misled into disclosing personal information under a mistaken belief that they were dealing with the Complainant. The Respondent also appears to have previously offered services that in competition with those offered by the Complainant. By using the disputed domain name in such a way, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website, and services offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

In the circumstances, the Panel considers the Respondent’s registration of the disputed domain name using a privacy service, together with the Respondent’s failure to reply to the Complainant’s cease-and-desist letter, to be further evidence of bad faith. The fact that the disputed domain name no longer resolves to an active website does not materially alter the Panel’s findings above.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 <fxcm-ex.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: November 26, 2020