WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Guobing Li, fafaok and Li Zong (李宗)

Case No. D2020-2601

1. The Parties

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

Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Guobing Li, fafaok, Cayman Islands, United Kingdom, and Li Zong (李宗), China.

2. The Domain Names and Registrars

The disputed domain name <fxcm5.com> is registered NameCheap, Inc.

The disputed domain name <fxcm6.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (collectively the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 10 and 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 Complainant on October 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on October 21, 2020.

On October 20, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 21, 2020, Complainant confirmed its request that English be the language of the proceeding. 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 13, 2020.

The Center appointed Yijun Tian as the sole panelist in this matter on December 18, 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

A. Complainant

Complainant, FXCM Global Services, LLC, is a company incorporated in US. It is a company, which operates as a retail broker in the foreign exchange (“Forex”) market. Founded in 1999, Complainant is a leading provider of online Forex trading, CFD trading and related services. It has numerous international offices, such as those located in Germany, Australia, France, Hong Kong, China, and South Africa, amongst others (Annex 5 to the Complaint).

Complainant has exclusive rights in FXCM, and FXCM related marks (hereinafter “FXCM marks”). Complainant is the owner of numerous FXCM marks worldwide, including a US trademark registration for FXCM registered on September 17, 2002 (the US trademark registration number 2620953); and a European Union Trade Mark registration for FXCM registered on November 3, 2005 (European Union Trade Mark registration number 003955523).

B. Respondents

Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Guobing Li, fafaok, Cayman Islands, United Kingdom, and Li Zong (李宗), China. The disputed domain names <fxcm5.com> and <fxcm6.com> were registered on May 15, 2020 and July 4, 2020, respectively, long after the FXCM marks were registered. The disputed domain name <fxcm5.com> resolves to a website that is primarily used to invite Internet users to download software unconnected to Complainant. Such an invite to download unauthorised software has the characteristics of malware (Annex 12 to the Complaint). The disputed domain name <fxcm6.com> was used to host the exact same content as found on <fxcm5.com> (Annex 13 to the Complaint), and currently resolves to an inactive website (Annex 12 to the Complaint).

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names <fxcm5.com> and <fxcm6.com> are confusingly similar to the FXCM trademark.

Complainant contends that Respondents lack rights or legitimate interests in the disputed domain names.

Complainant contends that Respondents have registered and used the disputed domain names in bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <fxcm6.com> is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent Li Zong (李宗) to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

a) In the present case, neither Complainant nor its representative are familiar with the Chinese language.

b) There is evidence that Respondent Li Zong (李宗) understands the English language, as all of the disputed domain names host content in English (Annexes 12 and 15 to the Complaint). This suggests that Respondent Li Zong (李宗) is at the very least competent in English.

c) The commission of a translator would add unnecessary costs to Complainant, who already bears the costs of filing and will cause a delay in the commencement of proceedings; such action is contrary to the drafter of the Policy’s intentions, which is to provide a cost-effective and expedited resolution process.

d) Further, the disputed domain name <fxcm5.com> has been registered with the Registrar NameCheap, Inc. whose registration agreement is in English and Respondent Guobing Li, fafaok has agreed to be bound by such agreement in English.

Respondent Li Zong (李宗) did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain names, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names <fxcm5.com> and <fxcm6.com> include Latin characters (“fxcm”) and number (“5” and “6” respectively”), and are registered in the generic Top-Level Domain (“gTLD”) space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent Li Zong (李宗) appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain names include Latin characters and number, rather than Chinese scripts; (b) the gTLD of the disputed domain names is “.com”, so the disputed domain names seem to be prepared for users worldwide, including English speaking countries; (c) the website resolved by the disputed domain names were English websites (Annex 12 and Annex 13 to the Complaint); (d) the Center has notified Respondent Li Zong (李宗) of the proceeding in both Chinese and English, and Respondent Li Zong (李宗) has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a response in either English or Chinese but none was filed.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Consolidation of Respondents

The Panel notes that the present Complaint has been filed against multiple Respondents and Complainant has submitted a request for consolidation. On this subject, section 4.11 of the WIPO Overview 3.0 provides inter alia as follows:

"The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint".

The Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain names or corresponding websites are subject to common control, such as the disputed domain names have been used to host identical website content (Annex 13), and that the connection between the disputed domain names is reinforced by the similarity in their composition with the only differing aspect between the disputed domain names is the number following the Complainant’s trademark, “5” and “6”. In all of these circumstances, the Panel considers that it is procedurally efficient to allow Complainant to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties.

6.3 Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the FXCM marks. The disputed domain names <fxcm5.com> and <fxcm6.com> comprise the FXCM mark in its entirety. The disputed domain names only differ from Complainant’s trademarks by the suffix “5” and “6” respectively, and the gTLD suffix “.com” to the FXCM marks. This does not compromise the recognizability of Complainant’s marks within the disputed domain names, nor eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain names (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11.1.)

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to respondent of the dispute, the use by respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) respondent has been commonly known by the disputed domain name, even if respondent has acquired no trademark or service mark rights; or

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

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

The FXCM marks have been registered internationally, including a US trademark registration for FXCM registered since 2002; and a European Union Trade Mark registration for FXCM registered since 2005, which long precede Respondents’ registration of the disputed domain names (both in 2020). According to the Complainant, founded in 1999, Complainant is a leading provider of online Forex trading, CFD trading and related services. It has numerous international offices, such as those located in Germany, Australia, France, Hong Kong, China, and South Africa.

Moreover, Respondents are not authorized dealers of FXCM branded products or services. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:

(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “Fxcm” in the disputed domain names and in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the FXCM marks or to apply for or use any domain names incorporating the FXCM marks.

(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names in 2020, long after the FXCM marks became internationally known. The disputed domain names are confusingly similar to the FXCM marks.

(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, the websites, resolved by the disputed domain names, were websites that were primarily used to invite Internet users to download software unconnected to Complainant (Annexes 12 and 13 to the Complaint). It seems that Respondents made profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203.)

The Panel notes that Respondents have not produced any evidence to establish their rights or legitimate interests in the disputed domain names.

Accordingly, Complainant has established that Respondents have no rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith.

(a) Registration in Bad Faith

The Panel finds that the FXCM marks have widespread reputation as a leading provider of online Forex trading, CFD trading and related services. It has numerous offices worldwide, such as those located in Germany, Australia, France, Hong Kong, China, and South Africa. As mentioned above, FXCM marks are registered internationally, including a US trademark registration for FXCM registered since 2002; and a European Union Trade Mark registration for FXCM registered since 2005. It is not conceivable that Respondent would not have had actual notice of the FXCM marks at the time of the registration of the disputed domain names (in 2020). The Panel therefore finds that the FXCM mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondents have chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain names were registered in bad faith.

(b) Use in Bad Faith

Respondents used the websites resolved by the disputed domain names to invite Internet users to download software unconnected to Complainant (Annexes 12 and 13 to the Compliant). Thus, the Panel concludes that Respondents are currently using the confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondents’ websites.

Given the reputation of the FXCM marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve. In other words, Respondents have through the use of confusingly similar disputed domain names created a likelihood of confusion with the FXCM marks. Moreover, as mentioned above, Respondents invited Internet users to download software unconnected to Complainant via the websites to which the disputed domain names resolved, presumably for commercial gain.

The Panel therefore concludes that the disputed domain names were registered and are being used by Respondents in bad faith. Such use of the disputed domain names are also disruptive in relation to the interests of Complainant.

In summary, Respondents, by choosing to register and use the disputed domain names which are confusingly similar to the FXCM marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain names and the conducts of Respondents as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <fxcm5.com> and <fxcm6.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: January 2, 2020