Westmore · UDRP DecisionOandapremium.com
The Panel ordered transfer of <oandapremium.com>. It found the domain confusingly similar to the OANDA mark because the mark remained recognizable despite the addition of “premium.” The Respondent lacked rights or legitimate interests, and the domain had previously resolved to a website displaying the Complainant’s mark and logo and imitating its official website. The Panel concluded that the Respondent knowingly registered and used the domain to attract users for commercial gain through confusion and a most likely phishing scheme. The website’s later unavailability did not prevent a finding of bad faith.
The timeline behind oandapremium.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The case illustrates how a domain combining an entire distinctive mark with a promotional term can satisfy confusing similarity and how the associated website’s content can become decisive under the second and third elements. The former site’s use of the OANDA mark and logo, imitation of the official website, and apparent targeting of the Complainant’s services supported both the absence of legitimate interests and intentional commercial confusion. The decision also confirms that taking a previously active website offline does not, by itself, eliminate a bad-faith finding grounded in documented prior use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION OANDA Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Ali Muhamad Case No. D2021-1499 1. The Parties The Complainant is OANDA Corporation, United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States. The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ali Muhamad, Malaysia. 2. The Domain Name and Registrar The disputed domain name <oandapremium.com> is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 25, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2021. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 27, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant in this proceeding is OANDA Corporation, a United States-based corporation with its principal place of business in the State of New York. The Complainant’s business model seeks to transform all aspects of how the world interacts with currencies, whether that be trading or utilizing currency data and information, by providing currency exchange and financial information services and products. The Complainant owns the OANDA mark, which enjoys thorough protection through many registrations worldwide. The Complainant is, inter alia, the owner of United States trademark registration number 2874938 for the OANDA trademark, registered on August 17, 2004. Moreover, the Complainant has operated one of the world’s leading currency exchange services since 1996. Its primary website is “www.oanda.com”. The domain name <oanda.com> was registered on August 4, 1996. The disputed domain name was registered on November 10, 2020. The disputed domain name currently shows a message informing Internet users that the website is not reachable. However, it appears from the documents and information provided by the Complainant that it was previously used for a website where the content displayed showed the Complainant’s OANDA trademark and logo and appeared to be designed to imitate the Complainant’s official website. The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant claims that: (a) the disputed domain name is confusingly similar to the Complainant’s trademark; (b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and (c) the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the OANDA trademark. The disputed domain name contains the Complainant’s OANDA trademark with the addition of the term “premium” and the generic Top-Level Domain (“gTLD”) “.com”. The addition in the disputed domain name of these elements does not prevent the renowned OANDA trademark from being recognizable in the disputed domain name. Pursuant to section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0 ”) which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Therefore, the Panel finds the disputed domain name to be confusingly similar to the OANDA trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, it appears that the Respondent has attempted to usurp Complainant’s goodwill in the trademark and deceptively impersonate the Complainant via a phishing website, in a blatant attempt to confuse and deceive Internet users into doing business with the Respondent instead of the Complainant. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the OANDA mark when it registered the disputed domain name. In fact, the Complainant’s OANDA trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods and services. It has been registered and used for many years and is a renowned trademark worldwide, especially in its own sector. Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s trademarks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name. The disputed domain name currently shows a message informing Internet users that the website is not reachable. However, it appears from the documents and information available that it was previously used for a website where the content displayed showed the Complainant’s OANDA trademark and logo and appeared to be designed to imitate the Complainant’s official website. The website was exclusively devoted to the Complainant and the Complainant’s services. Consequently it is clear that the Respondent registered the disputed domain name while aware of the Complainant’s trademark and activity, and did so with the intention to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of either the Respondent and/or its website, and did so by constructing a (most likely) phishing website to mislead visitors into believing that the Respondent is purportedly the Complainant, so as to trick those users into doing business with the Respondent instead of with the Complainant. The fact that the website at the disputed domain name shows a message saying it is not reachable does not prevent a finding of bad faith. Further inference of bad faith can also be found in the failure to respond to the cease and desist letter sent by the representative of the Complainant. Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <oandapremium.com> be transferred to the Complainant. Fabrizio Bedarida Sole Panelist Date: August 4, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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