Fenix Securities, LLC v. Emil Wacior
Claim Number: FA2202001985802
Complainant is Fenix Securities, LLC (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is Emil Wacior (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fenixsecurities.org>, registered with Registrar of Domain Names REG.RU LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2022; the Forum received payment on February 24, 2022.
On February 28, 2022, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <fenixsecurities.org> 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 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 March 2, 2022, the Forum served the Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of March 22, 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.org. Also on March 2, 2022, the Russian and English language Written Notice of the Complaint, 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 March 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Russian language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Russian. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language (see, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006)). Here, Complainant submits that Respondent is capable of understanding English because the resolving website including the User Agreement, Privacy Policy and Contact Us sections are all written in English. Complainant submits that Respondent’s website is clearly targeted at consumers who speak English, with the intention of conducting business in English.
The Panel notes that the preponderance of UDRP decisions have treated this argument as enough to show a capacity in English and so the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in FENIX and FENIX SECURITIES. Complainant holds national registrations for those trademarks. Complainant submits that the domain name is identical or confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used for a legitimate purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having repeatedly targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a United States regulated broker offering trading platform services by reference to the trademarks FENIX and FENIX SECURITIES;
2. the disputed domain name was registered on January 21, 2022 and resolves to a website offering services identical to those of Complainant and closely emulating the look and feel of Complainant’s official website;
3. Complainant is the owner of, inter alia, Benelux Trademark Reg. No. 01451976 for FENIX SECURITIES from a date prior to registration of the disputed domain name; and
4. there is no association between the parties.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in FENIX SECURITIES since it provides proof of its registration of that trademark with the Benelux Trade Marks Office, a multi-national trademark authority[i].
The disputed domain name takes the trademark to which it merely adds the gTLD, “.org”. That addition is not of any distinctive value and the Panel finds the domain name to be legally identical to the trademark (see, for example, Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”); Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”); Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark or service mark rights; or
(iii) you are making a 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The Registrar confirmed that the domain name registrant is “Emil Wacior” which does not indicate that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and there is nothing which might contradict that claim.
The evidence accompanying the Complaint shows that the disputed domain name resolves to a website which broadly copies the look and feel of Complainant’s official website and offers the same services as those provided by Complainant under the trademarks. Such use clearly does not equate to a non-commercial or fair use of the domain name.
The Panel finds that Respondent has not used the domain name in connection to a bona fide offering of goods or services or for a legitimate noncommercial or fair use (see, for example, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. … this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”);
The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line 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 site or location.’
The Panel finds that the matter falls under paragraph 4(b)(iv). It has already found the disputed domain name to be legally identical to one of Complainant’s trademarks. Confusion is inevitable. In terms of the Policy the only issue is that of “commercial gain” and in that respect the Panel finds it more likely than not that Respondent is profiting from the confusion occasioned by the misuse of Complainant’s trademark - the actual manner is not important. In that respect the Panel notes here Complainant’s submission that:
“On information and belief, Respondent previously operated the website <fenixsecurites.eu>. In response to a demand made by Complainant’s legal counsel, Key Systems GmbH, the registrar, suspended <fenixsecurites.eu> and the URL no longer resolves to a working site. Shortly thereafter, upon information and belief, Respondent registered and operated the website <fenixsecurities.site>. Complainant filed a proceeding regarding that domain through this forum, FA2201001980848, and received a favorable decision dated February 18, 2022. Upon information and belief, Respondent then registered the Offending Domain and has been operating the Offending Website from the Offending Domain ever since.”
The Panel finds that Respondent has used the domain name intending to attract Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Panel finds that Complainant has satisfied the third and final element of the Policy.
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 28, 2022
[i] The Panel notes here that although the Benelux Trade Marks Office provides a so-called “deposit” system of trademark registration, neither the UDRP nor the majority decisions under the Policy, has not sought to qualify the force of those registrations in any way. In any event, the Panel observes that Complainant is the owner of United States Patent and Trademark Office Reg. No. 5,632,615, registered Dec. 18, 2018 for FENIX and, if necessary, would have found the disputed domain name to be confusingly similar to that trademark since the word “securities” is purely descriptive and adds nothing distinctive to the invented word, FENIX.
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