WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FXCM Global Services, LLC v. Domain Administrator, See PrivacyGuardian.org / Steve Jones

Case No. D2021-1737

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 Domain Administrator, See PrivacyGuardian.org, United States / Steve Jones, Germany.

2. The Domain Name and Registrar

The disputed domain name <fxcm-group.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 2021, 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 June 4, 2021, 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 June 4, 2021.

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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on July 6, 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 operates a foreign exchange business providing retail brokerage, trading services and educational courses with physical offices located in countries that include Cyprus, Australia, Hong Kong, China, Canada and South Africa. The Complainant holds a portfolio of registrations for the trademark FXCM, and variations of it, in numerous geographies including the United States. United States Trademark Registration No. 2620953, for example, was registered on September 17, 2002.

The Complainant owns a number of domain names that include its trademark and operates its main website from the domain name <fxcm.com> and through its mobile app.

The Disputed Domain Name was registered on November 10, 2020. The Disputed Domain Name resolves to a webpage offering services that compete with those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant cites several trademarks registrations around the world for the mark FXCM including United States Trademark Registration No. 2620953 registered on September 17, 2002 as prima facie evidence of ownership.

The Complainant submits that the mark FXCM is well known (presumably in classes 36 and 41) for foreign exchange, advice and seminars, and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the FXCM trademark and that the similarity is not removed by the addition of the hyphen and the word “group”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has no relevant trademarks or licence rights. The Complainant submits that “the Respondent is using the Disputed Domain Name to purportedly offer identical services to that of the Complainant, namely online trading …(and that the Respondent’s website offers) the option for users to create an account, which involves the user inputting personal details” and that these do not qualify as legitimate non-commercial or fair use of the Disputed Domain Name.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that the Disputed Domain Name is well known, the Respondent ignored a cease and desist letter and that the “use of a domain name for “per se illegitimate activity […] is manifestly considered evidence of bad faith” citing WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4).

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FXCM in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; WIPO Overview 3.0, section 1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the FXCM trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark FXCM (b) followed by a hyphen (c) followed by the word “group”; (d) followed by the gTLD “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “fxcm-group”.

It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, a hyphen and the word “group” being a collective noun that, in this context, refers to a plurality of companies that operate as one entity: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111 (“Complainant’s mark is distinctive and well-known in its industry”); FXCM Global Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Soy Cao, WIPO Case No. D2021-0653 (“Complainant provides clear evidence that the trademark FXCM is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities”)).

This Panel accepts the Complainant’s contention that the Disputed Domain Name <fxcm-group.com> is confusingly similar to the Complainant’s FXCM trademarks.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name offers services that compete directly with those of the Complainant and; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the names FXCM, and has not been commonly known by the names FXCM; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. There is also no evidence the Respondent has the Complainant’s permission to use the trademark FXCM (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”) and no evidence indicating that the Respondent is commonly known by the Disputed Domain Name (See: Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”)).

Further, the composition of the Disputed Domain Name where, as here, it consists of the Complainant’s trademark and a collective noun connoting some kind of affiliation with the Complainant, in this Panel’s view carries “a high risk of implied affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).

This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and notes that the Complainant has submitted evidence of fraudulent activity by the Respondent that, in the absence of a Reply by the Respondent, the Panel accepts as accurate. The use of a domain name for illegal activity, including impersonation and fraud, can never confer rights or legitimate interests on a domain name registrant (see WIPO Overview 3.0, section 2.13.1).

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy requires that the complainant must also demonstrate that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these requirements.

The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, this Panel infers that the composition of the Disputed Domain Name comprised of the Complainant’s name and a trademark, is clear evidence of bad faith and that the Respondent was fully aware of the Complainant when registering the Disputed Domain Name. Further, this Panel finds the Respondent created a risk of confusion that the visitors to the website will initially expect to access a website operated by the Complainant (or by one of its affiliates). It is also possible that an Internet user may believe that the Disputed Domain Name resolves to a website that is associated with or endorsed by the Complainant (see: Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by eighteen years.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name resolves to a website offering services that compete with those of the Complainant. The Complainant has also supplied evidence that the relevant website invites users to “Open an account”, which this Panel infers is a fraudulent attempt to solicit the deposit of money from the misled Internet user to the benefit of the Respondent, the very essence of bad faith (see WIPO Overview 3.0, section 3.1.3).

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark FXCM and incorporated it in the Disputed Domain Name along with a hyphen and the collective noun “group”, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights and disrupt its business.

Further, this Panel finds that the Complainant used a privacy service, and supplied a false contact information, in an attempt to avoid being held to account for its conduct. In the absence of an explanation from the Respondent as to why use of a privacy service might be appropriate in this case, the Panel finds the evidence supports a further inference of bad faith on this basis also (see WIPO Overview 3.0, section 3.6)

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <fxcm-group.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: July 15, 2021