The Complainant is OANDA Corporation, United States of America (“United States”), represented by Faegre Drinker Biddle & Reath LLP, United States.
The Respondents are Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Joash Mrudhe, Armenia and Carter Maureen, United Kingdom.
The disputed domain names <oandaeu.com> and <oandaservice.com> are registered with Shinjiru Technology Sdn Bhd and PDR Ltd. d/b/a PublicDomainRegistry.com, respectively (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 2020 and September 24 2020, the Registrars transmitted by email to the Center their verification responses 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 the Complainant on September 30, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 6, 2020.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 23, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 14, 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.
The Complainant provides trading, currency data and analytics solutions, counting with offices in the United States, Canada, the United Kingdom, Germany, Poland, Singapore, Australia, Japan, and India.
It is the owner of the OANDA trademark, duly registered in the United States under No. 2,874,938 on August 17, 2004 (Annex 7 to the Complaint) in international class 36, as well as of the domain names <oanda.com> and <oanda.eu> registered on, respectively, August 4, 1996 and November 1, 2010.
The disputed domain names appear to have been used in connection with an elaborate phishing scheme (Annexes 13 and 14 to the Complaint) and were registered on and are presently used in connection with:
|
Disputed Domain Name |
Registration Date |
Present Use |
|
<oandaeu.com> |
March 23, 2020 |
Redirecting to the Complainant’s webpage |
|
<oandaservice.com> |
March 26, 2020 |
No active webpage |
The Complainant asserts to have initiated use of the OANDA trademark on June 1996 in connection with currency exchange and financial information services in the United States. Having used said mark on a global basis the Complainant believes that its OANDA mark became well known.
The Complainant sustains that the disputed domain names are under common control and requests that they be dealt with at a single proceeding given that: (i) the disputed domain names were registered within a few days, sharing (ii) a similar naming pattern comprised of the reproduction of the Complainant’s distinctive trademark and additional generic wording and appear to have been used in connection with (iii) a single fraudulent recruiting scheme designed to obtain sensitive information from those seeking employment with the Complainant (Annexes 13 and 14 to the Complaint).
The disputed domain names, according to the Complainant, reproduce entirely the Complainant’s OANDA trademark with the addition of the generic terms “eu” and “service”, which is not sufficient to avoid a finding of confusing similarity under the Policy.
Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:
i. the Respondents have used the disputed domain names to send fraudulent emails from an outgoing email server using the <oandaservice.com> disputed domain name and having directed traffic to the subdomain <login.oandaeu.com> to engage in “chat” communications at the “employment area” of their website (Annex 14 to the Complaint) with those who respond expressing interest in fake internship posting made by the Respondents offering to interview and make hiring decisions if certain sensitive information such as name, sex, address, date of birth, telephone number, email, and previous employer information is provided (Annex 13 to the Complaint), all of this reproducing the Complainant’s OANDA trademark, logos, color schemes, corporate names, addresses, and providing victims with fake employment information such as an application form and internship agreement form that also prominently feature the Complainant’s trademark and other indicia;
ii. the Respondents have not been given permission, authorization, consent or license to use the OANDA trademark.
Furthermore, the Complainant submits that it is clear that the Respondents have registered and used the disputed domain names in bad faith attempting to pass off as the Complainant so as to conduct a phishing scheme seeking to obtain personal information from the Respondents’ victims due to a confusion exacerbated by the Respondents’ use of the Complainant’s well-known trademark, logos, corporate names, addresses, color schemes and by using the disputed domain names which are so remarkably close to the Complainant’s own domain names.
The Respondents did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.
Before turning to these questions, however, the Panel needs to address the issue of consolidation of multiple Respondents.
The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at section 5.A. above.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here 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”.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the two disputed domain names dealt with at the same proceeding, given that the disputed domain names share a number of characteristics: a) they relate to the same trademark that belongs to the Complainant, b) they were all registered within one week, c) they appear to have been used in connection with the same fraudulent scheme (Annexes 13 and 14 to the Complaint).
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.
The Complainant has established its rights in the OANDA trademark, duly registered in several jurisdictions around the world (Annexes 7 and 8 to the Complaint).
The Panel finds that the disputed domain names reproduce the Complainant’s well-known trademark in its entirety. The addition of the terms “eu” and “service”, does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.
In that sense, and according to the evidence submitted, the Respondents’ use of the disputed domain names to impersonate the Complainant and to conduct phishing activities and/or in connection with webpages depicting the Complainant’s trademark and/or to redirect Internet users to the Complainant’s official webpage clearly cannot be considered a bona fide offering of goods or services.
In addition to that, the absence of any indication that the Respondents have been commonly known by the disputed domain names, or that they have acquired any registered trademarks or trade names corresponding to the disputed domain names, as well as the Complainant’s statement that no authorization, license or permission has been given for the Respondents to register and use the disputed domain names corroborate with the indication of the Respondents’ lack of rights or legitimate interests in the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites or location or of a product or service on the Respondents’ websites or location.
In this case, the use of the disputed domain names in connection with fraudulent schemes and with webpages that reproduced the Complainant’s trademarks, characterizes the Respondents’ intent of commercial gain by misleadingly diverting the Complainant’s consumers (WIPO Overview 3.0, section 3.4). Moreover, the current inactive use of one the disputed domain names or the present redirection to the Complainant’s official webpage does not prevent a finding of bad faith.
For the reasons above, the Panel finds that the Respondents’ actions amount to bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
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, <oandaeu.com> and <oandaservice.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 28, 2020