The Complainant is Rodeler Ltd. of Limassol, Cyprus, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Fxlotos Services Limited of Villa, Saint Vincent and the Grenadines, internally represented.
The disputed domain name <24boption.com> is registered with Internet Domain Service BS Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2016. On January 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2016, 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 January 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2016. The Response was filed with the Center on February 16, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on February 23, 2016. 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.
The Panel understands that binary option trading is a particular type of trading in which the investor can get a fixed return or nothing – and is, in that sense, binary. The Complainant offers such trading services via its online platform. The Respondent claims to do the same.
The Complainant owns an international trademark registration for 24OPTION.COM registered on June 7, 2013, recognized by the Panel in Rodeler Ltd. v. BFMM Limited / Ruben Hazi, Options, WIPO Case No. D2015-0857. The Complainant is also the owner of a registration for that mark, registered on the principal register of the United States Patent and Trademark Office, registered in June 2014 and filed in June 2013, as well as registrations in other jurisdictions.
The Registrar stated to the Center, in its verification response, that it could not confirm the date on which the disputed domain name was registered by the Respondent. The Respondent refers to registering the disputed domain name on October 18, 2013. The Complainant also provides evidence (from the “DomainTools” website) that the disputed domain name was registered on that date. The Panel has therefore accepted that this is the date of the registration by the Respondent.
The Complainant sent a cease-and-desist letter to the Respondent in December 2014, and resent it in June 2015. The Complainant received no response.
The Complainant provides evidence of the Respondent’s website, as it was in December 2015. The homepage for that site includes the prominent title “24Boption Binary Options” and text in Russian.
The Complainant says that the proceeding should be conducted in English, as the registration agreement is in English at the time this dispute was initiated, and the Respondent has replied to ‘cease and desist’ letters to it from the Complainant in that language, and the disputed domain name includes English characters. (The Panel notes that the Registrar has also confirmed, after the Complaint was filed, that the language of the registration agreement for the disputed domain name is English.)
The Complainant says that it operates a well-known binary option website under the brand name “24Option”, and it has operated a related website at “www.24option.com”. The Complainant says that its website has over 5.2 million users accessing its website on a monthly basis and it receives over 6 million page views per month (although the Complainant does not provide supporting evidence for these claims). As a result, the Complainant says it has a substantial world-wide reputation. The Complainant provides evidence of its various advertising.
The Complainant points to a recent decision under the Policy in its favor, in which the then panelist “observes that both the Complainant and the Respondent are active in an identical and focused trading activity in which, as elaborated by the Complainant, only a number of businesses operate a reliable and formally registered trading platform. The Complainant contends to be a leading player, which the Panel finds confirmed by a first and high level enquiry into publicly available information.” Rodeler Ltd. v. BFMM Limited / Ruben Hazi, Options, supra.
The panel in that case also found that “The Complainant has actively advertised its operations worldwide, amongst others by the sponsorship of the world-renowned football club Juventus. In view of the limited scope of this business section, in which both the Respondent and the Complainant appear to be active, its international reach and the position held by the Complainant as one of the leading business in it, the Panel finds that the Complainant has sufficiently demonstrated that the Respondent registered and used the Disputed Domain Name in bad faith.”
The Complainant says that the disputed domain name is materially identical to its registered mark. The Respondent’s addition of the letter “b” symbolizes a reference to “binary” which is the type of trading services operated by the Complainant and if anything only adds to the confusion. That addition does not avoid a finding of confusing similarity. Further, the word “24Option” is the principal component of the disputed domain name.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no affiliation with the Complainant and, to the Complainant’s knowledge, no trademark registration for a term incorporated in the disputed domain name.
The Complainant says that the disputed domain name was registered and is used in bad faith. The Respondent knew or should have known of the Complainant’s mark, particularly in light of the limited scope of the binary options trading field. The look and feel of the Respondent’s website is similar to the Complainant’s website, including the use of a logo containing the number “24”, similar to the Complainant’s logo.
The Respondent says that it is familiar with the Complaint, which does not agree with the legality of the Respondent’s use of “24boption.com”. The disputed domain name was registered by the Respondent because it was composed of 24 digits (which in turn means the work of the Respondent’s platform), the letter “b” (an abbreviation of the word “binary”), and the word “option”. At the time the Respondent registered the disputed domain name, the Complainant did not have a relevant registered trademark. The date of the Complainant’s trademark registration is June 24, 2014.
The Respondent says that it is not trying to attract customers of the Complainant by creating a likelihood of confusion, and is spending a huge portion of its own profits for advertising and attracting customers through affiliated partners. The Respondent says that its website and platform is “radically different” to the Complainant’s, which eliminates visual confusion.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
These elements are discussed in turn below, immediately following a consideration of the language of the proceedings, which was an issue raised by the Complainant.
Paragraph 11 of the Rules provides that, unless otherwise agreed by the Parties, the language of the proceedings shall be those of the registration agreement, subject to the power of the Panel to determine otherwise. The Complainant has made an argument that the language of the proceedings should be in English. Despite making this argument, the language of the registration agreement is English, and there was no dispute raised by the Respondent on this point. As such, the Panel confirms that these proceedings are properly conducted in that language.
The Complainant has a registered mark for 24OPTION.COM. The disputed domain name is only relevantly different to the extent that it inserts the letter “b” between “24” and “option”.
Previous UDRP panels have found that the mere addition of a single letter to a mark is insufficient to avoid a finding of confusing similarity. See e.g. Coutts & Co. v. Sande Skalnik, Patrick Harding, WIPO Case No. D2015-1590 and the cases cited therein.
At best, the addition of a single letter in this case is trivial. Further, as noted by the Complainant, and accepted by the Respondent, the inclusion of that letter is designed to signify a reference to “binary”, which is the same service operated by the Complainant and claimed to be operated by the Respondent (for which the Respondent itself provided no direct evidence). As such, the inclusion of that letter may only serve to reinforce confusion with the Complainant’s mark.
The Respondent suggests that the disputed domain name contains generic elements it is entitled to use. However, the Complainant has a registered mark and it is entitled to a presumption of distinctiveness on that basis. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
The Complainant denies having authorized, licensed, or permitted the Respondent to use its trademark, and there is otherwise no evidence that the Respondent has been or is commonly known by the disputed domain name.
The Respondent however claims to be using the disputed domain name in connection with similar services as those operated by the Complainant. The Respondent denies that the Complainant can have rights in the 24OPTION.COM mark, and suggests that the disputed domain name is merely descriptive of the service the Respondent offers. The Panel does not accept this contention for the following cumulative reasons:
Firstly, the Respondent provided no supporting evidence of its business, beyond its submission of a brief one page email as the Response which makes the bare claim that it operates in the same field of business as the Complainant. If the Respondent had any substantial evidence to support its case, the Panel expects the Respondent would have provided it.
Secondly, the Respondent’s website prominently appears to unfairly exploit the Complainant’s reputation. For example, prominent on the Respondent’s site is the use of the logo containing the number “24”, similar to the Complainant’s logo.
Thirdly, the Respondent has registered a domain name that is confusingly similar to the Complainant’s mark, in the same field of business. As noted further below in relation to bad faith, it is clear that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name, and the Panel considers that this was done in bad faith. These circumstances cannot be a basis for the Respondent establishing a right or legitimate interest in the disputed domain name.
Fourthly, the Respondent did not reply to the Complainant’s cease-and-desist letter. Such a failure to respond seems to the Panel, in the circumstances of this case, inconsistent with good faith conduct, or the Respondent’s inference that it operates a legitimate business and focused trading activity in which, as elaborated by the Complainant, only a number of businesses operate a reliable and formally registered trading platform. The Panel infers from this failure that the Respondent had no good reply. See, e.g., Citrix Systems, Inc. v. Domains by Proxy, LLC / Sirishareddy Idamakanti - Sirisha Idamaknti, WIPO Case No. D2015-0017; E. & J. Gallo Winery v. Oak Investment Group, WIPO Case No. D2000-1213; and Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
The Respondent denies that it has sought to attract Internet users by creating confusion with the Complainant’s mark. Evidence of such conduct would be evidence of bad faith under paragraph 4(b)(iv) of the Policy. The Respondent also denies that the Complainant had a registered mark at the time the disputed domain name was registered on October 18, 2013.
The Panel does not accept the first of these claims, for many of the same reasons set out above. The Respondent was no doubt aware of the Complainant’s mark. It purports to operate in a similar and specialized field of business as the Complainant. The Respondent has registered a confusingly similar domain name. The Respondent provides no evidence of having actually being in business before the Complainant. The Respondent’s website contains similarity in the presentation (“look and feel”) to the Complainant’s website. It is also notable that the Respondent’s website refers to itself as “24boption” – presented as a logo which is similar to the Complainant’s mark. This evidence leaves the Panel in little doubt that the Respondent is seeking to unfairly trade on the Complainant’s reputation.
The Panel also does not accept the contention that the Respondent registered the disputed domain name prior to the Complainant’s trademark rights arising. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established…the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” However, in this case the Complainant has an international mark registered prior to the registration of the disputed domain name. In addition, the Complainant has filed other of its trademark registrations before the date the disputed domain name was registered, and so is entitled to priority.
For these reasons, the Panel finds that the disputed domain name has been registered and is used in bad faith.
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 <24boption.com> be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: March 9, 2016