DECISION.
Complainant is Forex Club International Limited (“Complainant”), represented by Thomas M. Wilentz , of Thomas M. Wilentz, Attorney at Law, PLLC , New York , USA . Respondent is INO.com, Inc. (“Respondent”), represented by Flip Petillion , of Crowell & Moring , Belgium .
REGISTRAR AND DISPUTED DOMAIN NAME.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2010.
On March 31, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2010 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@forexclub.com. Also on April 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on April 20, 2010.
On April 23, 2010, a timely additional submission was received from Complainant.
On April 28, 2010, a timely additional submission was received from Respondent.
All submissions were considered by the Panel.
On May 3, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS.
Complainant owns the trademark FOREX CLUB, registered on October 7, 2002 with the United States Patent and Trademark Office. Complainant also owns the U.S. registered mark FOREX CLUB FINANCIAL COMPANY for financial services.
Complainant has established common law service mark rights to the FOREX CLUB mark in the United States since at least as early as January 2005, and has established international rights to the mark through use on the Internet since at least as early as 2002.
Complainant owned the forexclub.com domain name from March 2002 through March 2005 and had offered services under the FOREX CLUB service mark on the web site at forexclub.com since at least as early as August 5, 2003. The FOREX CLUB service mark has been in continuous use by Complainant and Complainant’s licensee to designate Complainant’s financial services from 2002 to the present time.
Respondent has no rights or legitimate interests in the domain name. Complainant has not given Respondent permission to use Complainant’s FOREX CLUB trademark, nor has Complainant given Respondent permission to use the Domain Name.
There are no services offered or marketed by Respondent in connection with the mark ForexClub.
As of December 17, 2009, when Complainant’s cease desist letter was received at Forex Club, Discovery Village Shady Side, MD, Respondent INO.com, Inc. had notice of this dispute.
Prior to January 5, 2010, INO.com, Inc. has not made any use of the forexclub.com domain name in connection with a bona fide offering of goods or services. Respondent cannot show use of the Domain Name in connection with a bona fide offering of goods or services, nor can Respondent show it is or has been commonly known by the Domain Name.
Respondent is using the domain name to attempt to divert traffic to a website that directly competes with the Complainant.
Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s registered FOREX CLUB trademark; has, through its attorney, indicated that it might accept payment from Complainant in exchange for the transfer of the Domain Name; had knowledge of Complainant’s right in the FOREX CLUB trademark at the time Respondent registered the Domain name; and passively held the Domain Name. Respondent has registered and is using the domain name in bad faith under Section 4(a )( iii) of the Policy.
INO.com, Inc. was formed in 1989 by John Hewison. INO operated a website, where free-to-view financial information was available.
INO was quite successful, launching, in addition to its free-to-view information on INO.com, a pay-per-view site called MarketClub.
In the middle of May, 2005 forexclub.com was being marketed. It was decided to pursue the purchase of the forexclub.com domain name, to complement the MarketClub name already on the website.
Negotiations were had with buydomains.com, and on June 15, 2005 the name was purchased for $3,400, and registered at Godaddy.com. INO posted the forexclub.com name on June 26, 2005, and re-registered the name on June 15, 2008.
Forex Club International Limited was not the first owner of this domain name. The name was owned by Global Forex Trading LTD from at least December 1999 through March 2002. Global apparently let the domain name expire.
Following Global’s release of the domain name, Complainant apparently purchased it in or about March 2002. As of August 6, 2003, the domain name only referred to a webpage in Russian and Cyrllic writing. This website did not describe itself as FOREXCLUB, but rather FXCLUB. From November 24, 2003 through September 3, 2004, the domain name was merely used as a Russian landing page with no content. The archived webpages refer to the domain name fxclub.com and not the disputed domain name. An English website perhaps emerged only on February 4, 2005. The last known change to the website before the registration expired apparently occurred on February 14, 2005.
Complainant claims first use as of August 5, 2003. However in its application to register its trademark, Complainant stated its first use was “at least” June 27, 2005 after INO purchased the domain name and after INO went active with its website. Complainant’s trademark registration was approved on May 27, 2008. The U.S. Patent and Trademark Registration Office lists first use as of June 27, 2005.
Complainant’s exclusive U.S. licensee, Forex Club Financial Company, Inc. lists June 27, 2005 as its Initial Filing Date with the New York Department of State, the same date identified as “first use” by the USPTO. In a letter dated February 16, 2010, to the Commodity Futures Trading Commission, the licensee asserted that it had been engaged in the retail forex business “since January 2006,” that is, six months after the domain name was registered, and six months after INO went active in the website.
Complainant took no action to let INO know of any problem until December 2009, when it caused a cease-and-desist letter to be sent to Maher. Until receipt of that letter, no one at INO had any information of knowledge or Complainant, or its website.
Complainant’s cease-and-desist letter stated it wanted settlement discussions between counsel to begin. Complainant’s counsel made an offer to buy the domain name; INO offered to buy Complainant.
In appears INO and Complainant are not competitors. INO is in the business of providing financial information, including regarding foreign exchange, for view only. According to statements Complainant has made, it is in the retail forex business, and is registered as a futures commission merchant. INO does not provide investment services.
Respondent does not contest that Complainant applied for trademark registration with the USPTO on February 21, 2007 and that the disputed domain name is identical to the FOREX CLUB trademark. The trademark rights claimed by Complainant must be considered invalid as they are purely descriptive. “FOREX” is commonly used for designating information services regarding currency trading.
Respondent has rights and legitimate interest in the domain name, for which it paid valuable consideration.
That “forex” is a genetic term can be evidenced by a Google search. There are hundreds, if not thousands, of organizations with the terms FOREX Club in their domain name.
Complainant’s purported ownership of a trademark in the name of FOREX CLUB, and INO’s ownership of a domain name with the word forex in it, does not create confusion.
When a respondent is using a generic word to describe his product/business without intending to take advantage of Complainant’s rights in that word then it has a legitimate interest.
When INO purchased the domain name, it had no intention to take advantage of Complainant’s rights in that word; Respondent merely wanted a domain name with generic terms indicating its activity in the area of foreign exchange information.
When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith because of the registrant could not have contemplated the complainant’s non-existent right.
INO registered the domain name 2 years before Complainant applied for trademark registration and 3 years before it was approved. It did so without any knowledge of Complainant, or any interest it may have had in the name. Its registration could not have been in bad faith.
Given all statements made by Complainant, or its licensee, Complainant should now be esstopped from claiming its first use was before June 27, 2005. Then INO has first use, and common law trademark protection, which Complainant had infringed.
Complainant fails to show that the term FOREX CLUB is or has been used as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the term has become distinctive of that source.
A failure by a domain name holder to duly renew the domain name registration, blocks the domain name holder form establishing secondary meaning or established common law or unregistered trademark rights.
Whether the domain name was intentionally abandoned, or whether Complainant let it “inadvertently lapse,” at the time when Respondent paid for the domain name, Complainant had no trademark rights.
C. Additional Submissions.
INO’s services complete with Forex Club’s services directly as both parties offer financial services in the form of investment advice. Because the parties are competitors, Respondent’s use of the disputed domain name in the conduct of its business does not provide a basis for Respondent to claim a legitimate interest in the domain name.
INO used and uses the FOREXCLUB.com domain as a stepping stone to the INO.com website. At the INO.com website, investment information and advice is provided that competes with the services offered by Complainant under its registered FOREX CLUB mark. From the INO.com website a hyperlink is easily clicked that leads to the FOREX.com website.
Respondent is using the FOREXCLUB.com domain name to create a likelihood of confusion with Complainant for commercial gain and to the detriment of Complainant. Confusion occurs when an Internet user searching for Complainant types FOREXCLUB.com into the user’s browser and Respondent’s site comes up.
It defies credulity to believe that Respondent, during the negotiations to purchase the forexclub domain name from buydomains.com, when they knew that the domain name was not yet available because it had belonged to another party, would not have ascertained who such other party was.
Complainant had established rights in the FOREX CLUB mark internally by 2002 and in the United States by January 2005, and had even owned the disputed domain name and had offered services under the FOREX CLUB mark through the web site at forexclub.com as early as August 2003. The evidence shows clearly that Complainant’s FOREX CLUB trademark did exist long before Respondent registered the domain name.
It is not inconsistent to claim first use at least as early as June 27, 2005 on the trademark registration to claim first use internationally as of 2002 and in the U.S. as of January 2005 and Complainant Forex Club has submitted proof of such use which Respondent has not controverted with any evidence.
The emails between the parties’ attorneys show negotiation over price.
A central question is how did Complainant let its interest in the domain name lapse? The inference to be drawn from the facts is that Complainant intentionally abandoned its interest.
The evidence shows that Respondent purchased the domain name in good faith. Having paid for the domain name, in good faith, Respondent is the legitimate holder of it.
It is well-established that a domain name is not registered in bad faith when it registered prior to when a complaint has trademark rights and without knowledge of those rights.
Complainant’s claim is limited to the argument that Respondent should have been aware of its rights in the domain name. In the absence of actual knowledge, to conclude a domain name has been registered in bad faith, real evidence must be presented showing Respondent should have been aware of the Complainant’s rights when the disputed domain name was registered.
It is frivolous to say that, from the thousands of entities offering to make foreign exchange trades, Respondent should have known of Complainant’s interest in a domain name for its website.
The term “forex” is defined in a dictionary, , as “the foreign-exchange (“forex” or “FX”) market is the place where currencies are traded. The forex market is the largest, most liquid market in the world with an average traded value that exceeds $1.9 trillion per day.”
The word “club” is also defined. Disctionary.com provides the following definitions for “club”: A group of person organized for a social, literary, athletic, political, or other purpose: They organized a computer club; An organization that offers its subscribers certain benefits, as discounts, bonuses, or interest in return for regular purchases or payments: a book club; a record club; a Christmas club.
A “forex club” then is a group of persons with an interest in foreign exchange.
The domain name at issue is just a common descriptive phrase. Respondent had it before Complainant.
Respondent has a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive phrase, even if the domain name is confusingly similar to the registered mark of a complainant.
Respondent had no intent to trade on the goodwill associated with Complainant’s mark.
Respondent is not in the business of doing foreign exchange trades; anyone coming to INO to trade foreign exchange would be disappointed, and go to other sites. The two are not competitors, any more than a newspaper publishing football scores is competing with the football team.
Complainant does not provide any evidence of the unique nature of its business such that an ordinary consumer, or even a sophisticated one, associates “forex” with Complainant.
Respondent had no interest in selling the domain name, notwithstanding Complainant’s offer. Respondent’s interest in the domain name is genuine.
For the reasons set forth below, the Panel finds that Complainant is not entitled to the relief requested.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Registration and Use in Bad Faith, the Panel makes no ruling on this issue.
Rights or Legitimate Interests.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Registration and Use in Bad Faith, the Panel makes no ruling on this issue.
Registration and Use in Bad Faith.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a )( iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd , FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. , FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel further finds that Respondent has not registered or used the domain name in bad faith since it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG , D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd , FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a )( iii)).
Respondent contends that Complainant was the first to bring up the sale of the disputed domain name. Respondent alleges that Complainant made an offer to purchase the forexclub.com> domain name from Respondent and that Respondent rejected the offer. Respondent asserts that it never made an offer to Complainant or asked for money from Complainant. Respondent argues that it did not register the disputed domain name for the purpose of selling the disputed domain name to Complainant. The Panel finds that Respondent’s use of the domain name does not constitute bad faith registration and use pursuant to Policy ¶ 4(b )( i). See Open Sys. Computing AS v. degli Alessandri , D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent was not acting in bad faith by discussing the sale of its domain name registration when the complainant initiated an offer to purchase it from the respondent) ; see also Sumner v. Urvan , WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where the respondent merely replied to the complainant’s offer to purchase the domain name registration) .
Respondent claims that it does not compete with Complainant. Respondent alleges that it uses the forexclub.com> domain name to resolve to a website with hyperlinks to Respondent’s investment information services. Respondent argues that Complainant is in the investment service business and offers foreign exchange financial services. Respondent contends that its information services do not compete with Complainant’s actual services and therefore, that the website resolving from the domain name does not compete with Complainant or disrupt Complainant’s business. The Panel finds Respondent’s use of the domain name does not constitute bad faith registration and use under Policy ¶ 4(b )( iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway , D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine) .
Respondent contends that the domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s FOREX CLUB mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. The Panel also finds that Respondent did not register or use the domain name in bad faith under Policy ¶ 4(a )( iii). See Zero Int'l Holding v. Beyonet Servs. , D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong , FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Complainant has failed to prove this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED .
Accordingly, it is ordered that the > domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Panelist Dated: May 17, 2010.