TF Global Markets Pty Ltd v. Ztudium / Dinis Guarda
Claim Number: FA1508001634162
Complainant is TF Global Markets Pty Ltd (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Ztudium / Dinis Guarda (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2015; the Forum received payment on August 20, 2015.
On August 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org>, domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2015 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@forexthink.com, postmaster@forexthink.biz, postmaster@forexthink.info, and postmaster@forexthink.org. Also on August 21, 2015, the 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 September 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant uses the THINKFOREX mark in connection with its business as a provider of online trading platforms, trading tools, and information for online traders via the <thinkforex.com> domain name. Complainant has common law rights in the THINKFOREX mark dating back to Complainant’s first use of the mark in commerce on April 8, 2010. Respondent’s <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names are confusingly similar to Complainant’s THINKFOREX mark. Respondent’s domain names differ from Complainant’s mark through the addition of various generic top-level domain names (“gTLDs”) and a reversal of the terms “think” and “forex.” These differences are not sufficient to lessen the confusing similarity between Complainant’s mark and Respondent’s disputed domain names.
(ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names, nor has Respondent been authorized or licensed by Complainant to use the THINKFOREX mark. In addition, Respondent’s use of the disputed domain names, to display advertisements and information that competes with Complainant’s business, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
(iii) Respondent registered and is using the disputed domain names in bad faith. Respondent registered the disputed domain names to disrupt Complainant’s business through the offering of services that compete with Complainant on confusingly similar domains. Further, Respondent intentionally attempts to attract Internet users to Respondent’s website for commercial gain. Finally, Respondent had Complainant’s business in mind when registering the disputed domain names.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain names were created on October 10, 2012.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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(e), 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 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.”).
Complainant claims that it has common law rights in the THINKFOREX mark based dating back to Complainant’s first use of the mark on April 8, 2010. The Panel notes that a complainant need not produce a trademark registration with a governmental authority to establish Policy ¶ 4(a)(i) rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Here, Complainant alleges it launched the <thinkforex.com> domain name on or about August 15, 2010 and has continuously used the domain in connection with its business as a provider of online trading platforms, trading tools, and information for online traders. In addition, Complainant has included evidence of awards Complainant has won and advertisements bought to promote its <thinkforex.com> and THINKFOREX mark. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights by showing the THINKFOREX mark has taken on a secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). However, as the Complainant’s mark is comprised of distinctive words, and inherently distinctive, Panel does not think there is a greater onus on Complainant to present compelling evidence of secondary meaning or distinctiveness.
Complainant asserts that Respondent’s <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names are confusingly similar to Complainant’s THINKFOREX mark. Respondent’s domains reverse the THINKFOREX mark and add gTLDs. Panels have routinely held that the addition of a gTLD is generally not relevant when analyzing confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Further, panels have held that when a respondent transposes the words of a mark in a domain name the domain is confusingly similar to the mark. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”). The Panel finds that Respondent’s disputed <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names are confusingly similar to the THINKFOREX mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that Respondent has not been commonly known by the disputed domain names, nor has Respondent been authorized or licensed by Complainant to use the THINKFOREX mark. WHOIS information indicates that Respondent registered the disputed domain names using the name “Dinis Guarda” of the organization “Ztudium” which does not resemble the disputed domain names. Panels have found respondents to not be commonly known by a disputed domain name based on WHOIS information and a lack of authorization to use the mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel accordingly finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also claims that Respondent’s use of the disputed domain names, to display advertisements and information that competes with Complainant’s business, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has previously used the <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names to resolve to a website that includes advertisements for various financial and investment websites that compete with Complainant. Panels have held that a respondent’s use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent uses the domain to host advertisements for services that compete with a complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, the Panel finds that Respondent’s use of the <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant claims that Respondent has registered and is using the disputed domains in bad faith. Complainant asserts that Respondent’s registration of the <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org> domain names competes and disrupts Complainant’s business in bad faith. Respondent’s disputed domain names resolve to a website that includes various links to financial, trading, or investment sites that offer services similar to those of Complainant. Past panels have found a respondent acted in bad faith where a respondent’s domain resolved to a website hosting links in competition with a complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant further contends that Respondent attracts and confuses Internet users for commercial gain. To support this contention Complainant claims that Respondent’s domains are only explicable as variants of the THINKFOREX mark in which Complainant claims to have rights. Further, Complainant argues that Respondent is commercially profiting from the confusion of users who believe that Respondent’s domain names are associated with Complainant’s business. Panels have found that a respondent has acted in bad faith under Policy ¶ 4(b)(iv) where a respondent commercially profited from use of a disputed domain name that is confusingly similar to a complainant’s mark. Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the THINKFOREX mark. Complainant argues that Respondent's familiarity with the financial industry in which Complainant operates indicates that Respondent had actual knowledge of Complainant's mark and rights. Panels have not generally regarded constructive notice to be sufficient for a finding of bad faith. Panel finds that Complainant has not submitted sufficient evidence supporting the fame and notoriety of Complainant’s mark enough for Panel to infer that Respondent had actual knowledge of Complainant's mark and rights and therefore does not accept Complainant’s contentions in this regard. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration.")
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <forexthink.com>, <forexthink.biz>, <forexthink.info>, and <forexthink.org>, domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 6, 2015
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