The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by RGC Jenkins & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Smith of Barcelona, Spain; Privacy.P of Nobby Beach, Queensland, Australia. 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 September 9, 2013. On September 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 13, 2013 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 September 19, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2013.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on October 18, 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 Complainant is the owner of the figurative trademark F FIL WORLDWIDE INVESTMENT, registered inter alia as a Community Trademark No 11735339 with priority from April 12, 2013. The Complainant is a leading provider of financial services in the United Kingdom. The Complainant has been providing financial services under the trademark FIL since February 1, 2008.
The disputed domain name was registered on April 23, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the only distinctive element in the disputed domain name is the acronym “fil”, which has no meaning in the English language. The disputed domain name also includes the descriptive word “investments”, which serves to denote financial services of the sort in which the Complainant trades in. The disputed domain name is therefore confusingly similar to the Complainant’s trademark.
The Complainant states that the Respondent is not using the disputed domain name for a bona fide offering of goods or services. On the contrary, the disputed domain name is used in connection with a financial fraud. The disputed domain name points to a website that purports to be operated by FIL Investment Management (Luxembourg) SA, a company within the Complainant’s group of companies. In addition, the Complainant has been notified by the Financial Conduct Authority of the United Kingdom that the entity behind the website has cloned FIL Investment Management (Luxembourg) SA and has been using the disputed domain name for a share fraud.
Furthermore, when the disputed domain name was registered, the Complainant had already used the FIL trademarks internationally for five years, so it is inconceivable that the Respondent was not aware of the Complainant’s trademark when registering the disputed domain name. The Respondent has also used a privacy service, which in connection with the facts of this case supports the conclusion that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it is the proprietor of registered figurative trademark for the mark F FIL WORLDWIDE INVESTMENT. The priority dates of these registrations predate the registration of the disputed domain name. The Panel is of the opinion that, considering that the Complainant is providing services in the field of international financial investments, the most distinctive part of the Complainant’s trademarks is the mark FIL.
This mark has no meaning in the field of financial services and is an inherently distinctive mark. Hence the Panel considers that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Complainant has attached an email from the Financial Conduct Authority of the United Kingdom, alerting the Complainant that the website to which the disputed domain name may have been set up in order to perpetrate a share fraud scam and that it poses a threat to United Kingdom consumers.
The Respondent has not responded to these allegations. The use of a domain name for apparently illegal activities cannot be the basis of rights or legitimate interests to a domain name. C. Registered and Used in Bad Faith
As the Complainant had been trading under the trademark F FIL WORLDWIDE INVESTMENT for five years before the disputed domain name was registered, and also bearing in mind that the Respondent has presented itself to be a company within the Complainant’s group of companies, it is clear that the Respondent has been aware of the Complainant and its trademarks when registering the disputed domain name.
Pretending to be a company within the Complainant’s group of companies shows that the Respondent has used the disputed domain name to direct traffic to its website. Bearing also in mind the Financial Conduct Authority’s suspicions, it is clear that the Respondent’s motive for registering and using the disputed domain name has been to pose as the Complainant for financial gain.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Tuukka Airaksinen
Sole Panelist
Date: October 23, 2013
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