WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. 廖春桃 (Chun Tao Liao)

Case No. D2020-2807

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 廖春桃 (Chun Tao Liao), China.

2. The Domain Name and Registrar

The disputed domain name <fxcmbtc.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 November 12, 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 November 12, 2020.

On November 12, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 12, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020.

The Center appointed Rachel Tan as the sole panelist in this matter on January 7, 2021. 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 company founded in 1999. It is based in London and operates as a retail broker in the foreign exchange (“Forex”) market. It provides online Forex trading, contract for differences (“CFD”) trading and related services, including cryptocurrency trading services. The Complainant aims to provide global traders with innovative trading tools and high-quality training educators, such as mobile trading, one-click order execution and trading from real-time charts.

The Complainant owns several trade mark registrations for the FXCM mark, including United States Trade Mark No. 2620953 registered on September 17, 2002 in class 36, European Union Trade Mark No. 003955523 registered on November 3, 2005 in classes 35, 36 and 41, and Australia Trade Mark No. 1093998 registered on June 13, 2006 in classes 36 and 41.

The Complainant’s main website is “www.fxcm.com” and it also owns a range of domain names which incorporate the FXCM mark, such as <fxcm.asia>, <fxcm.ba>, <fxcm.blog> and <fxcm.bo>.

The Respondent is 廖春桃 (Chun Tao Liao), China.

The disputed domain name was registered on March 27, 2020 and does not at the date of this decision resolve to an active webpage. According to the screen captures provided by the Complainant, the disputed domain name previously resolved to a website in Chinese. The website was featuring the Complainant’s FXCM trade mark and logo, and was purportedly offering financial investment services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its FXCM trade mark. The disputed domain name incorporates the FXCM trade mark in its entirety with the addition of the letters “btc”. “Btc” is a commonly known abbreviation used to represent “Bitcoin” and it is insufficient to avoid confusing similarity. The conjunction of “btc” with the FXCM trade mark creates further confusion in the minds of Internet users as users familiar with the Complainant’s services will assume that the disputed domain name is affiliated with the Complainant’s services in relation to Bitcoin. The generic Top-Level Domain (“gTLD”) “.com” can be disregarded as it is a standard registration requirement.

The Complainant further alleges that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not registered any trade marks for the term “Fxcm”, and there is no evidence that the Respondent holds any unregistered rights to the term “Fxcm”. The Respondent has not received any license from the Complainant to use a domain name which features the FXCM trade mark. The disputed domain name is used by the Respondent to host a website which appears to offer identical services of the Complainant, which does not confer a genuine good faith use. The Respondent’s use of the disputed domain name in this manner is competitive to the Complainant’s business. The Respondent is not known, nor have the Respondent ever been known as “Fxcm”. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the mark in any way. The sole intention of the Respondent is to mislead Internet users as to its affiliation with the Complainant, and to trade off the Complainant’s rights and reputation by impersonating the Complainant to offer identical services as the Complainant.

The Complainant finally asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s earliest FXCM trade mark registration predates the creation date of the disputed domain name by at least 18 years. A cease-and-desist letter was sent to the Respondent and he/she was given the opportunity to give evidence of any actual or contemplated good faith use but chose not to respond. The Respondent has engaged in a pattern of registering trade mark-abusive domain names to prevent trade mark holders from reflecting their mark in a corresponding domain name. The Respondent was also the holder of the domain name <fxcmhk.com.cn> which infringed against the Complainant and was used to host identical content as the disputed domain name. This illustrates the Respondent’s clear intention to target the FXCM mark. The Respondent’s use of the disputed domain name to host a website thematically similar to the Complainant’s official website, shows a clear attempt to deceive Internet users as to the affiliation of the disputed domain name with the Complainant’s brand. The Respondent’s use of the disputed domain name is particularly egregious as the disputed domain name prompts Internet users to register and create an account in order to use the service.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding:

(a) The Complainant submits that there is evidence that the Respondent understands English language. The website attached to the disputed domain name is fully available in English. However, the Panel notes that according to the screenshot provided by the Complainant, the disputed domain name used to resolve to a website in Chinese. The Panel further notes the evidence provided by the Complaint shows that the Respondent was the owner of the domain name <fxcmhk.com.cn>, which resolved to a similar website in both English and Chinese. See also FXCM Global Services, LLC v. 廖春桃 (Chun Tao Liao), WIPO Case No. DCN2020-0036 (involving the domain name <fxcmhk.com.cn>). The Respondent also operates other English language websites and has registered domain names containing English words. These demonstrate the Respondent’s understanding of English; and

(b) In compelling the Complainant to translate and submit the Complaint in Chinese, the Panel would not be acting in keeping with the overriding principles in Paragraph 10, in particular 10(b), in that the parties should be treated equally and given a fair opportunity to present their case, and 10(c) which preserves the time span of the process.

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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.

(a) The Complainant is a company based in London, United Kingdom. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) The Respondent appears to understand English. Even if the Respondent does not possess a sufficient command of English to understand the Complaint, the Panel also notes that there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(c) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese and has been notified of his/her default.

The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the FXCM mark.

The Panel notes the disputed domain name is comprised of the FXCM trade mark in its entirety. The positioning of the FXCM trade mark in the front of the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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 section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, the additional element “btc” does not preclude a finding of confusing similarity between the FXCM trade mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of other terms that describe or refer to part of the complainant’s business in the domain name does not eliminate the confusing similarity of the domain name from the complainant’s trademark under the first element of the Policy. The addition of the term “btc”, which is commonly used as an abbreviation for “Bitcoin”, relates to the Complainant’s business. Such addition does not eliminate the confusing similarity of the disputed domain name from the Complainant’s FXCM trade mark. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to ignore gTLD suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In circumstances where the Complainant possesses exclusive rights to the FXCM trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “fxcm” in the disputed domain name. There is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. The Respondent was formerly using the disputed domain name in connection with a purported offering of commercial services under the Complainant’s trade mark and logo. However, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s FXCM trade mark or register the disputed domain name. The Respondent is now passively holding the disputed domain name. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy are present in this case.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s FXCM trade mark had been registered well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s FXCM trade mark is known throughout the world. Moreover, “fxcm” is not merely a random combination of letters. Search results using the key word “fxcm” on the Baidu and Google search engines direct Internet users to the Complainant and its services, which indicates that an exclusive connection between the FXCM trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s FXCM trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.

Section 3.1.4 of the WIPO Overview 3.0 states that “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 trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s widely-known FXCM mark plus the descriptive term “btc” creating a presumption of bad faith.

The Panel notes that the disputed domain name formerly resolved to a website which displayed the Complainant’s FXCM trade mark and logo and purportedly offered the same type of services as the Complainant. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s FXCM mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This evidences bad faith use of the disputed domain name, as provided in paragraph 4(b)(iv) of the Policy. Further, the Respondent appears to be engaged in a pattern of abusive registration having registered another domain name comprising of the Complainant’s FXCM trade mark. See FXCM Global Services, LLC v. 廖春桃 (Chun Tao Liao), supra.

In addition, the Panel finds that the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, previously active use and currently passive holding of the disputed domain name and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 <fxcmbtc.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: February 9, 2021