The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells International LLP, United Kingdom.
The Respondent is Iyke Ajoa of Enugu, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 8, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On June 11, 2012, I Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2012.
The Center appointed Richard Hill as the sole panelist in this matter on July 6, 2012. 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 has registered trademark rights in the well-known marks FIDELITY and FIDELITY WORLDWIDE INVESTMENT.
The disputed domain name was registered on December 21, 2011 and fully incorporates the Complainant’s mark, together with descriptive terms.
The Complainant did not license or otherwise authorize the Respondent to use its marks.
The Respondent has also apparently registered other domain names which appear to target the financial industry and which include well-known marks. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it trades under the Fidelity, Fidelity International and Fidelity Wowrldwide Investment (among others) names and is one of the leading providers of financial services, offering investment management, retirement and shareholder services to customers worldwide. It employs around 5,500 people across 25 countries, and has assets under management of USD 212 billion (as at December 31, 2011).
According to the Complainant, the FIDELITY, FIDELITY INTERNATIONAL and FIDELITY WORLDWIDE INVESTMENT marks have been used in multiple jurisdictions in connection with financial services since 1930, and have been used continuously and extensively to the present day. The FIDELITY trademark has also been used in connection with online financial services since 1996. The Complainant owns registered FIDELITY marks in numerous countries worldwide. Over numerous years, and by virtue of the quality and widespread promotion of its services, the Complainant has developed substantial reputation and goodwill in the marks. This has resulted in the marks becoming particularly well-known within the financial services market.
Further, says the Complainant, the Respondent is using the disputed domain name which is the combination of three elements. The first of which, being “fidelity”, is identical with the Complainant’s well-known and protected FIDELITY mark. The other two elements, “worldwide” and “int”, are used by the Complainant as part of its trading name, marketing presence, or are descriptive and so do not serve to sufficiently differentiate the disputed domain name from the Complainant’s mark. The Complainant cites UDRP precedents to support its position.
According to the Complainant, the Respondent does not appear to have any trademark rights in FIDELITY, FIDELITYWORLDWIDEINT, or any variations thereof. The Respondent is not associated or connected with the Complainant in any way. The Complainant has never authorised or otherwise permitted the Respondent to use any of its trademarks or to apply for or to use any domain names incorporating the Complainant’s trademark. The Complainant further asserts that the Respondent is unable to rely on any of the circumstances set out in the Policy, paragraph 4(c)(i), (ii) and (iii), in order to demonstrate its rights or legitimate interests in the disputed domain name.
Further, says the Complainant, the disputed domain name is inherently so closely associated with the Complainant that a more innocent use which would not take advantage of the Complainant’s marks appears inconceivable. The Complainant cites UDRP precedents to support its position.
According to the Complainant, the disputed domain name resolves to a website that is password protected.
The Complainant alleges that by registering the disputed domain name as it has, the Respondent was likely to have been attempting, or intending to attempt, to attract, for commercial gain, Internet users to the website hosted at the disputed domain name, and that by the very nature of the similarity between the disputed domain name and the Complainant’s marks, a likelihood of confusion has been created as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location of a service on its website or location.
Further, says the Complainant, it has reason to believe that the Respondent’s WhoIs details are false and that it is engaged in a pattern of abusive behaviour, of which the disputed domain name is a part. These actions constitute bad faith and an abuse of the Complainant’s marks. The Complainant is aware of three domain names, including the disputed domain name, which:
a) take advantage of third party rights within the finance sector;
b) were all registered on 21 December 2011;
c) all share the same Registrar (I Corp.); and
d) all share the same address in Nigeria (i.e. 234 Enugu).
Further, two of these domain names feature phone number contact information which differ only in the final digit of a 13-digit number, and the same two domain names both had their WhoIs records updated on March 4, 2012. It is submitted that, given the overwhelming similarity between the registration details and circumstances of their registrations, in all likelihood the three domains were all registered by the same person, or persons all working towards the same purpose, namely to take advantage of financial services rights holders’ registered and unregistered rights. These are rights which the relevant holders have developed over many years and after spending significant amounts of money.
The Complainant further alleges that not only is the Respondent trying to target the financial services industry and abuse the right-holders’ marks, but also that the registrant name (and perhaps other details too) submitted is likely to be false – each of the three names for these domain names being different. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name reproduces the Complainant’s trademark in its entirety. The Panel finds that this is sufficient in the case at hand to establish confusing similarity in the sense of the Policy. See for example ECCO Sko A/S v. Jacklee,WIPO Case No. D2011-0800; The Coca-Cola Company v. PrivacyP / Acosta Jose Julian,WIPO Case No. D2010-0335; and RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059.
Further, the addition of descriptive terms such as “worldwide” and “int” to a mark is not sufficient to prevent a finding of confusing similiarity under the Policy. See Novell, Inc. v. Taeho Kim, NAF Claim No. 0167964 (finding the domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant’s trademark NOVELL”); see also American International Group, Inc. v. Ling Shun Shing, NAF Claim No. 0206399 (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy, paragraph 4(a)(i) because the appended term related directly to the complainant’s business).
Accordingly, the Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests and argued convincingly that, given the international reputation of its marks, it is hard to understand how the Respondent could have any rights or legitimate interests in the disputed domain name.
The Respondent does not present any explanation for its registration of the disputed domain name. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s silence. The Panel infers from the Respondent’s silence that it has no plausible explanation for its registration and use of the disputed domain name. Indeed, there is no evidence in the file showing that the Respondent has any rights or legitimate interests to the disputed domain name.
Further, the Panel holds, for the reasons set forth below, that the Respondent registered and is using the disputed domain name in bad faith. Under these circumstances, the Panel also finds that the Respondent does not have rights or legitimate interests in the disputed domain name. See The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided evidence to show that the disputed domain name was used to point to a password-protected website. Subsequently, the website under the disputed domain name only displayed the message “This Account Has Been Suspended”. Thus it is not clear whether or not the Respondent is actually using the disputed domain name to point to a website. Nevertheless the Panel must determine whether the Respondent has registered and is using the disputed domain name in bad faith. Since there is no direct evidence of what the Respondent intends to do with the disputed domain name, the Panel will have to make inferences from the available facts.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is available at: Section 3.2 of that overview states:
“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
Relevant decisions:
Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, , Transfer
Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, inter alia, Transfer
Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, inter alia, Transfer
Westdev Limited v. Private Data, WIPO Case No. D2007-1903, , Transfer
Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393, , Transfer
Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, , Transfer”
In accordance with the cited cases, this Panel must determine whether, in the circumstances of this particular case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant’s trademark has a strong international reputation and is well-known,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, and
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of the Complainant’s rights under trademark law, or a violation of paragrph 4(b)(iv) of the Policy.
In light of these particular circumstances, the Panel concludes that the Respondent’s apparent passive holding of the disputed domain name in this particular case satisfies the requirement that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.
Further, the Panel notes that the Respondent has apparently engaged in a pattern of registering domain names in an attempt to target the financial services industry and to abuse the right-holders’ marks. This is also an element indicating bad faith registration and use of the disputed domain name.
The Panel thus finds that the Complainant has satisfied its burden of proof under this element 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 be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: July 10, 2012
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