The Complainant is FIL Limited of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by RGC Jenkins & Co., United Kingdom.
The Respondent is PrivacyP of Nobby Beach, United Kingdom / L O M Links of Bolton, Bolton, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2013, 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 January 28, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Center verified that the Complaint and the amendment to 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 February 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2013.
The Center appointed Gunnar Karnell as the sole panelist in this matter on March 8, 2013. 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 disputed domain name was created on November 16, 2012.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Complainant is the registered owner and user of the UK trademark FIDELITY, (IPO Reg. No. 2554033, registered on December 6, 1996) and the EU trademark FIDELITY (CTM Reg. No. 003844925, registered on September 21, 2005). It also conducts business in many countries under a great number of trademarks containing the word FIDELITY, such as FIDELITY INVESTMENTS, FIDELITY INVESTMENT MANAGERS, FIDELITY WORLDWIDE INVESTMENTS and FIDELITY INTERNATIONAL. Its domain name, , was registered on November 30, 2000. Since then it is in use by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant is one of the largest and most widely known investment fund managers in the world. Founded over 40 years ago, its services have been offered under the brand name FIDELITY and other marks including the brand name. Its United Kingdom subsidiary FIL Investment Services (UK) Limited is one of the largest investment fund managers in the United Kingdom, trading with related companies and predecessors in business under the FIDELITY name and names including the FIDELITY trademark. The Complainant and its subsidiaries have acquired considerable reputation and goodwill related to financial services internationally, not least in the United States of America, together with extensive international advertising and placement and content sponsoring of financial websites exposing its trademarks. Its website is used to advertise vacancies within the Complainants corporate group and to provide information to those who consider to apply for roles within the Complainant’s companies.
The distinctive element in the disputed domain name, FIDELITY, is identical to the Complainant’s trademarks FIDELITY and similar to the other FIDELITY marks. Additional elements in the disputed domain name to FIDELITY (“recruitment”, “uk” and “com”) do not diminish the confusing similarity of the disputed domain name and the Complainant’s FIDELITY marks. “Recruitment” directly describes a Complainant’s activity and “uk” only denotes the activity’s possible connection with the United Kingdom, reinforcing the impression that the disputed domain name is that of the Complainant, linking to its UK-based business.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, not being commonly known by it and not using it or any name corresponding to it in connection with a bona fide offering of goods or services. The Respondent makes no legitimate or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark.
The disputed domain name leads to a blank website.
On November 28, 2012, the Complainant notified the Respondent about the Complainant’s rights. There was no answer.
The disputed domain name was registered and has been used by the Respondent in bad faith.
Circumstances clearly show that the Respondent’s lack of activity in not using the disputed domain name constitutes use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy, satisfying the requirements for finding use in bad faith by inaction that has in a number of UDRP decisions (e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273) been named “passive holding”.
The Complainant points out that the Respondent, lacking any connection with the Complainant’s business sphere, must have intended to create a domain name inherently likely to lure Internet users who look for a website relating to recruitment for the Complainant and its group for its United Kingdom operation. There would be no conceivable legitimate use to which the Respondent could put the disputed domain name, taking into account its inherently misleading nature. The Complainant’s long standing and substantial use of its FIDELITY marks and their reputation around the world and in the United Kingdom as well as its long-time use of its domain name , all to which the disputed domain name makes express reference, shall also be taken into account for attributing an opportunistic bad faith to the Respondent’s passive holding.
Also the Respondent’s failure to respond to the Complainant’s demand letter, sent prior to initiating its Complaint, and that the Respondent has concealed its identity for registration shall be given attention as passive holding.
In total, the circumstances reflect a deliberate intent on the part of the Respondent to create a nuisance and to interfere with the Complainant’s business so as to get paid valuable consideration in excess of costs related to a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence and ample reference to earlier UDRP decisions, leads the Panel to the following conclusions: A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s multi-registered and well-known trademark FIDELITY together with the word “recruitmentuk”. The latter, in the Panel’s opinion, does not dispel confusion. It simply indicates an activity directly attributable to the Complainant as a fraction of its business (to recruit in or for the United Kingdom). The Panel disregards the gTLD “.org” for purposes of this element of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and well known trademark FIDELITY and those other Complainant’s FIDELITY trademarks with specifications that have been listed above under Section 4. B. Rights or Legitimate Interests
The Complainant has made evident that it has not licensed or otherwise authorised the Respondent to use its trademark FIDELITY. Also, the Respondent does not appear to be commonly known by the disputed domain name and it is evidently not making a legitimate noncommercial or fair use or any other use of it.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. Nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
The Panel concludes that the Respondent has no rights and no legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant’s trademark, and also its use of its domain name during a long period preceding the registration of the disputed domain name, as well as the character of the composing elements of the disputed domain name, the Panel finds that the Respondent must have been aware of the Complainant and its trademarks, and therefore registered the disputed domain name in bad faith.
Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions, supported by reference to UDRP decisions, regarding facts leading up to its conclusion that the Respondent has not only registered but also used the disputed domain name in bad faith, the Panel finds that the Respondent’s inactivity, the act of passive holding, by not using the disputed domain name for any legitimate purpose following its registration in bad faith, satisfies the requirements under paragraph 4(a)(iii) of the Policy for transfer to the Complainant of the disputed domain name.
All conditions established in the Policy for transfer of the disputed domain name to the Complainant are satisfied. 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.
Gunnar Karnell
Sole Panelist
Date: March 18, 2013
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