FX Alliance, LLC v. M-Commerce Ltd. c/o Hooman Zadeh
Claim Number: FA0605000708816
Complainant is FX Alliance, LLC (“Complainant”), represented by Monica B. Richman of Brown Raysman Millstein Felder & Steiner LLP, 900 Third Avenue, New York, NY, 10022. Respondent is M-Commerce Ltd. c/o Hooman Zadeh (“Respondent”), 93 Grace Ave., Great Neck, NY, 11021.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwfxall.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 17, 2006; the National Arbitration Forum received a hard copy of the Complaint May 17, 2006.
On May 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwfxall.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 13, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwfxall.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <wwwfxall.com>, is confusingly similar to Complainant’s FXALL mark.
2. Respondent has no rights to or legitimate interests in the <wwwfxall.com> domain name.
3. Respondent registered and used the <wwwfxall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FX
Alliance, LLC, is a well-known foreign exchange trading company. Complainant holds numerous trademark
registrations in twenty-one countries, including two with the United States
Patent and Trademark Office (“USPTO”) for its FXALL mark (Reg. No. 2,575,269
issued June 4, 2002).
Respondent registered the <wwwfxall.com> domain name December 8, 2004. The disputed domain name resolves to the website of a direct competitor, Swiss Forex AG at <www.swissforex.com>.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant’s federal trademark
registrations with the USPTO sufficiently establishe Complainant’s rights in
the FXALL mark. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
The disputed domain name that Respondent registered, <wwwfxall.com>, is confusingly similar to Complainant’s FXALL mark pursuant to Policy ¶ 4(a)(i) because the addition of the letters “www” is not enough to negate the confusing similarity of Complainant’s mark to the disputed domain name. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <wwwfxall.com> domain name. Complainant must make a prima facie case to support of its allegations, and once Complainant does so, the burden then shifts to Respondent to show it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent lacks rights to or legitimate interests in the <wwwfxall.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
However, the Panel examines the record to determine if evidence in the record suggests that Respondent has rights to or legitimate interests under Policy ¶ 4(c). Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name and no evidence in the record suggests that Respondent is or has ever been known by the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Consequently, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using the disputed domain name to redirect Internet users to the site of a direct competitor of Complainant. In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name as it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of the complainant’s direct competitors. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent’s use of the disputed domain name containing Complainant’s protected mark to redirect Internet users to a website of Complainant’s competitor is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Moreover, the Panel finds that Respondent’s addition of the letters “www” constitutes typosquatting and is further evidence that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent registered and used
the disputed domain name in bad faith.
The disputed domain name that Respondent registered, <wwwfxall.com>,
resolves to the website of a direct competitor of Complainant. Thus, the Panel finds that Respondent
registered and used Complainant’s FXALL mark with intent to disrupt
Complainant’s business. Such conduct is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where the respondent’s sites pass users through to the respondent’s
competing business).
Additionally, the Panel finds that
Respondent engaged in typosquatting with this domain name to create a
likelihood of confusion with Complainant’s mark. This conduct also supports findings of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Black & Decker Corp. v. Khan, FA
137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com>
domain name was registered to “ensnare those individuals who forget to type the
period after the ‘www’ portion of [a] web-address,” which was evidence that the
domain name was registered and used in bad faith); see also Sports Auth.
Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002)
(“Redirecting Internet users attempting to reach a complainant’s website in
order to gain a profit off of a complainant is one example of bad faith use and
registration under the Policy.”).
Furthermore, the Panel infers, based on evidence in the record, that Respondent is using the disputed domain name for commercial gain. Respondent is taking advantage of the Complainant’s use of its trademark and Complainant’s success in its field of business to redirect Internet users to a competing business. This opportunistic use of Complainant’s mark creates a likelihood of confusion among Internet users who are attempting to locate Complainant’s services. Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwfxall.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 30, 2006
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