The Complainant is FXCM Global Services, LLC, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Damo Lin, Thailand.
The disputed domain name <fxcmcn1688.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 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 on October 13, 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 October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 9, 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 is a company, primarily based in London but with offices in the United States, Australia, Hong Kong, China and South Africa, which operates as a retail broker in the foreign exchange (“Forex”) market. The Complainant has since 1999 traded under the coined mark FXCM (the “FXCM Mark”) through which it offers online Forex trading, contract for differences (“CFD”) trading and related services. The Complainant promotes its services through numerous websites including its website at “www.fxcm.com”. The Complainant particularly markets its services to the China market and its website received over 470,000 visits from China in the first three months of 2020.
The Complainant is the owner of trade mark registrations in various jurisdictions for the FXCM Mark including United States registration No. 2620953 registered on September 17, 2002 for services in class 36.
The Domain Name was registered on April 10, 2020. The Domain Name does not, and there is no evidence that it ever has, resolved to an active webpage. The Complainant notes that the number string “1688” in the Domain Name may be a reference to Alibaba Group Holding Limited (“Alibaba”), which operates one of China’s leading business-to-business (“B2B”) marketplaces and owns a number of trade marks that incorporate the number string “1688”.
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s FXCM Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the FXCM Mark, being the owner of trade marks registered in various jurisdictions for the FXCM Mark. The Domain Name wholly incorporates the FXCM Mark, with the addition of the letters “cn” (a common abbreviation for China) and “1688” which may refer to the Chinese company Alibaba’s trade mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the FXCM Mark and the Respondent is not commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has never been used in any active way.
The Respondent has registered and uses the Domain Name in bad faith. Given the fame of the FXCM Mark and the nature of the Domain Name, being a combination of the FXCM Mark and a mark associated with the well-known Chinese company Alibaba, there are no plausible circumstances under which the Respondent could legitimately use the Domain Name other than in bad faith. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the FXCM Mark, having registrations for the FXCM Mark as a trade mark in the United States and other jurisdictions.
Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the FXCM Mark since it wholly incorporates the FXCM Mark with the addition of a geographical abbreviation “cn” and the number string “1688”, which may refer to the mark of the Chinese company Alibaba. The addition of such terms to a complainant’s recognizable mark does not prevent a finding of confusing similarity, see sections 1.8 and 1.12 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the FXCM Mark or a mark similar to the FXCM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and its reputation in the FXCM Mark at the time the Respondent registered the Domain Name. The FXCM Mark is a coined word that has been used for 21 years and has a significant reputation in China. Although the Respondent is located in Thailand, the Domain Name (through its addition of the “cn” and “1688” elements) is clearly targeting the Chinese market. In summary, there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that contains of the FXCM Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and its FXCM Mark.
The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name, the nature of the Domain Name itself, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is confusingly similar to the FXCM Mark and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use in a bad faith manner that would take advantage of confusion between the Domain Name and the FXCM Mark. As such, Panel finds that the passive holding of the Domain Name does not prevent a finding of bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel notes that this results in the transfer to the Complainant of a domain name that includes the number string “1688”, which the Panel understands may correspond to a number of trade marks owned by Alibaba, a company that is not a party to the current proceeding. In other cases under the UDRP, complainants have presented evidence of the consent of other trade mark owners with a potential interest in the transferred domain name. However, while in good practice neither the Policy nor the Rules expressly require such consent. Accordingly, the Panel orders that the Domain Name be transferred to the Complainant without prejudice to any rights which may be asserted by Alibaba.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fxcmcn1688.com> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 11, 2020