Complainant is FIL Limited of Hamilton of 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 (“UK”).
Respondent is Fidelity Inc of Brooklyn, New York, United States of America (“USA”). 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 November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 11, 2013.
The Center appointed Ross Carson as the sole panelist in this matter on December 23, 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
Complainant is one of the largest and best-known investment fund managers in the world. It was formerly named and traded as Fidelity International Limited, but on February 1, 2008 changed its name to FIL Limited. 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 Complainant was founded over 40 years ago, all of these services have been offered under the brand name FIDELITY and marks including FIDELITY, including FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS, FIDELITY WORLDWIDE INVESTMENTS and numerous other sub-brands preceded by the core FIDELITY trademark and trade name,
FIL Investment alone had over 660,000 customers in the UK and was responsible for looking after assets worth around USD 232.8 billion. In the USA, the FIDELITY-branded business carried on by Complainant’s sister company, FMR LLC, is one of the country’s largest mutual fund providers, the leading provider of workplace savings plans, and the top provider of individual retirement accounts (IRAs), with around USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion as of December 30, 2011.
For over 40 years, Complainant and its subsidiaries and related companies have regularly and prominently advertised their services under the FIDELITY trademark in print media circulated around the world and the international financial services trade press. For at least the last 12 years or so, Complainant and its subsidiaries and related companies have placed banners and sponsored content on at least 35 different third-party financial and corporate websites targeting investors and financial advisors around the world.
For over at least 15 years Complainant has promoted the financial services offered in association with the FIDELITY trademark in association with the domain name in the USA and the domain name in the UK among other domain names of Complainant incorporating “fidelity” as the distinctive element.
As a result of the extensive use of the FIDELITY trademark and trade name for over 40 years by Complainant its predecessors and related companies in association with financial services Complainant’s trademark is a well-known trademark distinguishing Complainant’s financial services in many parts of the world.
Complainant is the registered proprietor of inter alia the following trademark registrations and applications for FIDELITY and marks incorporating FIDELITY for a wide range of financial services and related services, all of which pre-date registration of the disputed domain name:
Community Trademark registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on May 21, 2004;
United Kingdom registration no. 2100049 for FIDELITY in Class 36, filed on May 13, 1996;
United Kingdom registration no. 1310766 for FIDELITY INVESTMENTS in Class 36, filed on May 21, 1987;
Community Trademark registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on May 21, 2004.
United Kingdom registration no.2583955 for F FIDELITY WORLDWIDE INVESTMENT design in Class 36, filed on June 8, 2011,
Community Trademark registration no. 10054377 for F FIDELITY WORLDWIDE INVESTMENT design in Class 35,36, and 42, filed on June 16, 2011.
The disputed domain name was registered by Respondent on June 17, 2013. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant submits that Complainant’s group of companies has been carrying business of investment fund management in association with the trade name and trademark FIDELITY in the USA and subsequently elsewhere throughout the world for over 40 years. Complainant is the owner of numerous trademark registrations in many parts of the world for the trademark FIDELITY as noted in Section 4 above. Through extensive use and business operations in many large cities on different continents the trademark FIDELITY has become well known in distinguishing the investment fund management services provided by Complainant’s group of companies. Complainant’s group of companies are responsible for investment fund management of substantial amounts of money on behalf of their clients as set out in Section 4 immediately above.
Complainant submits that the disputed domain name is confusingly similar to trademarks in which Complainant has rights. The only distinctive element within the disputed domain name, the word “fidelity”, is identical to the Complainant’s trademark FIDELITY and similar to the remaining FIDELITY marks. The additional elements within the disputed domain name are the descriptive word “world” and the word “nvestments”, which is a misspelling of the descriptive word “investments” likely to arise from a common and foreseeable typographical error. The word “world” denotes global activities, which is directly relevant to Complainant’s international business. The word “nvestments” is clearly a misspelling of the word “investment,” which denotes Complainant’s activities. They are particularly likely to be construed in this way when combined with FIDELITY.
Complainant further submits that taking account of Complainant’s reputation in the field of investments and its use and registration of FIDELITY WORLDWIDE INVESTMENT as a trademark and as a domain name linking to a website promoting its investment business and taking the reputation of the FIDELITY trademarks into account the disputed domain name is likely to be understood as denoting a website of or that is in some way associated with, authorized or endorsed by Complainant or its subsidiaries or related companies. The descriptive elements in the disputed domain do not diminish the confusing similarity of the disputed domain name with Complainant’s FIDELITY trademarks, but rather only reinforce the impression that the disputed domain name is that of or is in some way associated with Complainant. A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name, and is not using it or a name corresponding to it in connection with a bona fide offering of goods or services. Nor is Respondent making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s trademark. The disputed domain name does not currently link to any live website at all, A.3.(i) Registration in Bad Faith
Complainant submits that at the time the disputed domain name was registered on June 17, 2013, Complainant’s FIDELITY trademarks were internationally well-known in respect of the provision of financial and investment services worldwide, including in the UK, where Respondent is based. It would be implausible to suggest that Respondent was not aware of Complainant’s FIDELITY trademarks at that time, and indeed such awareness appears to have prompted the registration of the disputed domain name. The disputed domain name is inherently likely to attract Internet users looking for Complainant, and there is no conceivable legitimate use to which Respondent could put the disputed domain name taking into account its inherently misleading nature.
Complainant further submits that following the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No.D2000-0003; Intel Corporation v. The Pentium Group,WIPO Case No.D2009-0273 (in which the panel stated, “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”), and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (in which the panel stated, "VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
Complainant submits that the international fame of the FIDELITY trademarks combined with the similarity of the disputed domain name with those marks and with Complainant’s domain names and and the domain name of Complainant’s sister company, FMR LLC, together indicate that Respondent’s registration and passive holding of the disputed domain name was driven by knowledge of the Complainant’s FIDELITY trademarks, including FIDELITY WORLDWIDE INVESTMENT, and of Complainant’s activities under those marks. This to points to both registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. A.3.(ii) Use in Bad Faith
Complainant submits that although Respondent does not appear to be actively using the disputed domain name at this time, 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 Respondent’s act of passive holding is in bad faith (see, e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Complainant further submits that the international fame of a complainant’s trademark has supported findings that passive holding was use in bad faith in a number of cases, including Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No.D2000-0003; Intel Corporation v. The Pentium Group,WIPO Case No.D2009-0273 (in which the panel stated, “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”), and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (in which the panel stated, "VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
Complainant further submits that the provision of false contact information in a WhoIs record in breach of its warranty under paragraph 2(a) of the Policy is also a factor that may point toward bad faith passive holding of a domain name, as noted in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this case, Complainant’s representatives sent a demand letter to Respondent on September 26, 2013 to the address given in the WhoIs record, which was returned as undeliverable with “No one here by that name” written in manuscript on the envelope. Moreover, a search of the New York State Corporation and Business Entity Database conducted on November 12, 2013 indicates that there are no entities registered under the name “Fidelity Inc.” Respondent’s provision of apparently false contact information and failure to correct that information are in breach of the Policy and its registration agreement, which incorporates the Policy, and constitute further evidence of its registration and passive holding of the disputed domain name in bad faith.
Complainant further submits that Respondent’s registration and passive holding of the disputed domain name also reflect a deliberate intent to create a nuisance and to interfere with Complainant’s business such that Complainant or one of its competitors might be persuaded to pay valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name in order to secure its transfer, similar to the finding made in FIL Limited v Williams Murray,WIPO Case No. D2013-0508. There is therefore also evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy, or otherwise. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the registered owner of numerous trademark registrations for the trade mark FIDELITY in the UK and elsewhere in the world. Among the registered trademarks are:
Community Trademark registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on May 21, 2004;
United Kingdom registration no. 2100049 for FIDELITY in Class 36, filed on May 13, 1996;
United Kingdom registration no. 1310766 for FIDELITY INVESTMENTS in Class 36, filed on May 21, 1987;
Community Trademark registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on May 21, 2004;
United Kingdom registration no.2583955 for F FIDELITY WORLDWIDE INVESTMENT design in Class 36, filed on June 8, 2011;
Community Trademark registration no.10054377 for F FIDELITY WORLDWIDE INVESTMENT design in Class 35, 36, and 42, filed on June 16, 2011.
The disputed domain name incorporates Complainant’s trademark FIDELITY in its entirety, adding only the word ”world” and the term “nvestments”. The word “world” is descriptive of the territory in which Complainant uses its FIDELITY trademark and the term “nvestments” is a misspelling of the word “investments” descriptive of the investment fund services carried on by Complainant. Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name includes the trademark in its entirety, even if one or more generic terms is added in the disputed domain name. See, eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark). See also, Minnesota Mining & Manufacturing v. JonLR,WIPO Case No. D2001-0428; and Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc.,WIPO Case No. D 2000-0047.
The inclusion of the generic top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also, Laerdal Medical Corporation v. Lock's Computer Supply,WIPO Case No.D2002-0063.
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark FIDELITY. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s FIDELITY trademark. Complainant has been unable to locate an active website associated with the disputed domain name . Respondent is passively holding the disputed domain name.
Complainant has been unable to locate the Respondent. Complainant’s representatives sent a demand letter to Respondent on September 26, 2013 to the address given in the WhoIs record, which was returned as undeliverable with “No one here by that name” written in manuscript on the envelope. Moreover, a search of the New York State Corporation and Business Entity Database conducted on November 12, 2013 indicates that there are no entities registered under the name “Fidelity Inc.”
Complainant has been using its FIDELITY trademark for at least 40 years to promote its investment fund services. Respondent appears to have registered or acquired the disputed domain name on June 17, 2013 over forty years later when Complainant’s FIDELITY trademark was well-known in the USA, Europe and elsewhere throughout the world. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use a well-known trade mark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
There is no evidence that Respondent has ever been known by or used the trademark FIDELITY in association with its own investment services.
Respondent also cannot argue, under paragraph 4(c)(iii) of the Policy that it is making legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trade marks at issue. The disputed domain name is presently passively held with no active website and no use is being made of it by Respondent. However, given that Respondent has registered a domain name comprised of the Complainant’s FIDELITY trademark and a non-distinctive and descriptive word “world” and the term “nvestment” a misspelling of “investments” with which Complainant’s business and Complainant is most widely associated, under no circumstances would any use of the disputed domain name by Respondent constitute legitimate or fair use of the disputed domain name unless it was authorized by Complainant. Any use of the disputed domain name would take unfair advantage of the Complainant’s rights in its trademark and misleadingly divert users to Respondent’s website instead of Complainant’s business website by unauthorized use of the Complainant's FIDELITY trademark. Such use is neither a legitimate nor a fair use of the disputed domain name. See, Microsoft Corporation v. Superkay Worldwide,Inc.,WIPO Case No. D2004-0071.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated: “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
Through continued and extensive use of the trade mark FIDELITY by Complainant’s group of companies for over 40 years, Complainant has established significant goodwill and reputation in the FIDELITY trademark in the USA, the European Union and worldwide, particularly in relation to the provision of investment fund management and related services. FIL Investment alone had over 660,000 customers in the UK and was responsible for looking after assets worth around USD 232.8 billion. In the USA, the FIDELITY-branded business carried on by the Complainant’s sister company, FMR LLC, is one of the country’s largest mutual fund providers, the leading provider of workplace savings plans, and the top provider of individual retirement accounts (IRAs), with around USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion as of December 30, 2011.
The disputed domain name was registered by Respondent in June 2013, over 40 years after Complainant’s business was founded and commenced using the trademark FIDELITY in association with investment fund services. The disputed domain name is comprised of Complainant’s trademark FIDELITY, the descriptive word “world” and a misspelling of the word “investments” all of which words with the exception of the deliberate misspelling of “investments” are closely associated with Complainant’s trademarks and business of investment counselling. Due to the reputation of Complainant’s business in the world of investment services in the USA, in particular investment fund management, as summarized in the preceding paragraph, it is reasonable to infer that Respondent whose alleged address is in Brooklyn must have known of Complainant’s business at the time the disputed domain name was registered.
Even though Respondent does not appear to be actively using the disputed domain name at this time, 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 Respondent’s act of passive holding is in bad faith; see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Previous UDRP panels have found that non-use of a domain name which include well-known trademarks, which if used by a respondent would confuse Internet users into concluding that the website associated with the domain name belonged to the complainant constituted bad faith use under paragraph 4(a)(iii) of the Policy.
It is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See, Atlantic Recording Corporation v. Paelle International,WIPO Case No. D2001-0065, where the panel found: “Since the hypotheses identified in paragraph 4(b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the disputed domain name, may prove that the domain name has been registered and is being used in bad faith.” See also, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy support the assumption that passive use can also be of bad faith. In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […] The question that then arises is what circumstances of the inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.” In the Telstra case there were four particular circumstances of the case which led the panel to its conclusion. Three of those are present in this case, namely:
i. Complainant’s trademark has a strong reputation and is widely known; and
ii. Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and
iii. Respondent has taken active steps to conceal its true identity,
The Panel cannot conceive of any use of the currently passively held disputed domain name which would not mislead Internet users seeking Complainant’s goods to a website associated with the disputed domain name should it be activated.
Previous UDRP panels have found that that the incorporation of a well-known trademark in a domain name having no reason for doing so is in itself an indication of bad faith. See Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (in which the panel stated, “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”), and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (in which the panel stated, "VEUVECLICQUOT.ORG” is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”).
The Panel finds on a balance of probabilities that the currently passively held disputed domain name was registered and is being used in bad faith under 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 be transferred to Complainant.
Ross Carson
Sole Panelist
Date: January 3, 2014
Full & Egal Universal Law Academy