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 maymot iyke ajao of London, United Kingdom of Great Britain and Northern Ireland (the United Kingdom). 2. The Domain Names and Registrar
The disputed domain names and are 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 October 23, 2013. On October 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2013, the Registrar 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 November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 9, 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, either itself or through its subsidiaries, offers a full range of financial investment services throughout the world to private and corporate investors, including cash and equity ISA options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services for clients with larger investment portfolios, retirement savings, investment trusts and share dealing. Since the Complainant was founded over 40 years ago, all of these services have been offered under the brand name Fidelity and marks including FIDELITY, FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS, FIDELITY WORLDWIDE INVESTMENTS and numerous other sub-brands preceded by the core FIDELITY mark.
In the United Kingdom, where the Respondent is located, in 2012 the Complainant had over 660,000 customers and was responsible for assets worth around USD 232.8 billion.
The Complainant has provided the Panel with details of a number of trade mark registrations of its FIDELITY mark in the United Kingdom and the European Union, and has also provided the Panel with details of extensive advertising of its mark, in the United Kingdom and elsewhere.
The disputed domain name was registered on June 7, 2013, and the disputed domain name was registered on August 28, 2013. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its FIDELITY trade mark, with the additional elements within the disputed domain names being merely the descriptive word “worldwide” and the descriptive abbreviations “invst” and “invt” respectively.
The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names, and is not using them or a name corresponding to them in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names.
The Complainant further alleges that the disputed domain names have been registered and are being used in bad faith, and, in connection with bad faith usage, the Complainant asserts that the Respondent does not appear to be actively using the disputed domain name at the time the Complaint is filed and its use of cannot be determined, and argues that the Respondent’s passive holding may constitute use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy if, in the totality of the circumstances, it is clear that the Respondent’s act of passive holding is in bad faith (see, e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant or be cancelled:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
The Panel finds that the information presented by the Complainant is sufficient for the Panel to consider the trade mark FIDELITY as well-known.
In the circumstances of the present case, the Panel agrees with the Complainant that the elements additional to “fidelity” in the disputed domain names are descriptive and non-distinctive, and finds that the addition of these elements to the distinctive trade mark FIDELITY is insufficient to avoid a finding of confusing similarity in both cases. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of both disputed domain names. B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain names, may lead, in appropriate circumstances, to a finding that the disputed domain names were registered in bad faith. The Panel regards the circumstances of the present case, in which, in the Panel’s view, the disputed domain names are deliberately “engineered” to compete unfairly with the Complainant, make it appropriate for the Panel to find that the disputed domain names were registered in bad faith, and the Panel so finds.
In the Panel’s opinion, the Complainant has a legitimate concern that the disputed domain names could simply be activated at any time, and the Panel finds that it has to address the possibility that the current inactivity of the websites under the disputed domain names may simply be a tactical manoeuvre. Such legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the panel’s reasoning in that case, and, accordingly, finds in the circumstances of the present case, in which the Panel believes the Respondent intended to compete in bad faith with the Complainant, that the disputed domain names are being used in bad faith and that the Complainant has satisfied the dual requirement of 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 names and be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: December 23, 2013
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