Fenix Securities, LLC v. Andrzej Zdanowicz
Claim Number: FA2201001980848
Complainant is Fenix Securities, LLC (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman PLLC, New York, USA. Respondent is Andrzej Zdanowicz (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fenixsecurities.site>, registered with Registrar Of Domain Names Reg.Ru, Llc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2022. The Forum received payment on January 18, 2022.
On January 19, 2022, Registrar Of Domain Names Reg.Ru, Llc confirmed by e-mail to the Forum that the <fenixsecurities.site> domain name is registered with Registrar Of Domain Names Reg.Ru, Llc and that Respondent is the current registrant of the name. Registrar Of Domain Names Reg.Ru, Llc has verified that Respondent is bound by the Registrar Of Domain Names Reg.Ru, Llc registration agreement, which is in Russian, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Russian, setting a deadline of February 10, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fenixsecurities.site. Also on January 21, 2022, the Written Notice of the Complaint in both English and Russian, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
As noted, the Registrar of Domain Names REG.RU LLC registration agreement is in Russian. Pursuant to Rule 11(a), the language of the proceeding in relation to the <fenixsecurities.site> domain name shall be Russian unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the domain name is in English and resolves to an English language website. This suggests that the Respondent is conversant with and proficient in the English language. These circumstances satisfy the Panel that there would be no undue prejudice to Respondent if English were the language of the proceeding. Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Russian language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceeding may be conducted in English.
A. Complainant
Complainant offers securities trading platform services and end-to-end trading solutions to customers worldwide. Complainant owns United States Trademark Registration No. 5632615 for the mark FENIX and Benelux registration No. 1451976 for the mark FENIX SECURITIES.
In addition, Complainant’s FENIX SECURITIES brand is well-known, particularly in the financial brokerage community. By virtue of Complainant’s continuous, widespread and exclusive use of FENIX SECURITIES in connection with securities brokerage and related financial services, consumers associate FENIX SECURITIES exclusively with Complainant.
Respondent’s <fenixsecurities.site> domain name is identical to Complainant’s FENIX and FENIX SECURITIES marks and to Complainant’s domain name <fenixsecurities.com>, which Complainant registered in 1999 and uses for its website.
Respondent lacks rights or legitimate interests in the <fenixsecurities.site> domain name as Respondent is not commonly known by the domain name nor did Complainant authorize Respondent to use the FENIX or FENIX SECURITIES marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by offering similar, competing services on a website that mimics Complainant’s genuine website.
Respondent registered the <fenixsecurities.site> domain name in bad faith with actual knowledge of Complainant’s rights in the FENIX and FENIX SECURITIES marks due to the use and fame of the marks in commerce. Respondent uses the domain name in bad faith in an attempt to pass itself off as Complainant by offering similar, competing services on a website that mimics Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in United States Trademark Registration No. 5632615 for the mark FENIX for “securities brokerage services and financial services portfolio,” registered by a previous owner on December 18, 2018 claiming first use in commerce in November 2001 and assigned to Complainant on April 19, 2021. Complainant also has rights in Benelux registration No. 1451976 for the mark FENIX SECURITIES, registered on October 19, 2021.
On September 17, 2021, Complainant applied to register the mark FENIX SECURITIES in the United States. The application is pending. A pending trademark application would not by itself establish trademark rights within the meaning of Policy ¶ 4(a)(i): see WIPO Jurisprudential Overview 3.0, at ¶1.1.4.
The WIPO Jurisprudential Overview 3.0 at ¶1.3 states:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
Complainant has produced no evidence in support of its claims that its FENIX SECURITIES brand is well-known, particularly in the financial brokerage community and that, by virtue of Complainant’s continuous, widespread and exclusive use of FENIX SECURITIES in connection with securities brokerage and related financial services, consumers associate FENIX SECURITIES exclusively with Complainant.
Accordingly, the Panel declines to find that Complainant has common law rights in the FENIX SECURITIES mark.
Nevertheless, the Panel finds Respondent’s <fenixsecurities.site> domain name to be identical to Complainant’s Benelux registered FENIX SECURITIES mark and confusingly similar to Complainant’s FENIX mark, since it incorporates the latter mark in its entirety and adds the descriptive word “securities”, which, far from distinguishing the domain name from the mark, adds to the impression that the domain name is associated with Complainant since trading in securities is Complainant’s line of business. The inconsequential “.site” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <fenixsecurities.site> domain name was registered on October 14, 2021. It resolves to a website that is virtually identical in content, look and feel to Complainant’s website at “www.fenixsecurities.com”. It copies, word-for-word, content from Complainant’s website and represents that it is Complainant, giving an address in New York that was, until recently, Complainant’s address.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <fenixsecurities.site> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s FENIX mark and its “www.fenixsecurities.com” website when Respondent registered the <fenixsecurities.site> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fenixsecurities.site> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 18, 2022
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