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.
The Respondents are , Domain Discreet Privacy Service of Jacksonville, Florida, United States of America and Igor Ivanov of London, IT / Italy (hereafter the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 28, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2014 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 February 10, 2014.
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 amended Complaint, and the proceedings commenced on February 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 11, 2014. 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 a significant fund manager. It has operated for more than 40 years. The Complainant was formerly known as Fidelity International Limited, but on February 1, 2008 changed its name to FIL Limited. The Complainant, either by itself or through its subsidiaries, offers a range of financial investment services to private and corporate investors. As of September 30, 2012, the Complainant’s United Kingdom subsidiary alone had over 660,000 customers in the United Kingdom and was responsible for looking after assets worth around USD 232.8 billion. In the United States, the Complainant’s sister company, FMR LLC, holds USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion as of December 30, 2011.
The Complainant is the owner of a number of trademarks consisting of the word “Fidelity Investments” (the “FIDELITY Mark”), in jurisdictions across Europe, including in the United Kingdom, where the FIDELITY Mark was registered in 1991. The Complainant also maintains an active website, located at “”.
The Domain Name was registered on November 7, 2013. The Domain Name is currently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”), which offered funds management services, had the title “Investiment Solutions” and identified the website as being run by “Ceo Igor Ivanov, Fidelity Worldwide Investment”. The Respondent’s Website also gives, as the address of the “Fidelity Worldwide Investment” entity, the address of the Complainant’s UK subsidiary. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s FIDELITY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the FIDELITY Mark. It owns trade mark registrations for the FIDELITY Mark in various jurisdictions around Europe including the United Kingdom.
The Domain Name consists of the FIDELITY Mark and the word “Ivanov” which does nothing to detract from the identity of the preceding elements being the Complainant’s FIDELITY Mark. The Domain Name is confusingly similar to the FIDELITY Mark as the dominant part of the Domain Name is the Complainant’s FIDELITY Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the FIDELITY Mark or to seek the registration of any domain name incorporating the FIDELITY Mark. The Respondent is using the Domain Name to operate a site through which the Respondent offers investment services masquerading as the Complainant and FIL Investment, the Complainant’s UK subsidiary. The use of the Domain Name in order to perpetrate a fraud in which the Respondent offers financial services masquerading as the Complainant or one of its related companies does not and never could confer a right or legitimate interest on the Respondent.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the FIDELITY Mark. The Domain Name is being used to perpetrate an apparent financial fraud, in which the Respondent seeks to gain financially from masquerading as the Complainant or one of its related companies. Such use is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy or otherwise. The Respondent’s use of the Domain Name is calculated to create confusion with the FIDELITY Mark and to take advantage of that confusion for financial gain by defrauding consumers who think they are dealing with the Complainant or one of its related companies or subsidiaries. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the FIDELITY Mark, having registrations for the FIDELITY Mark as a trade mark in the European Union, and in particular the United Kingdom.
The Domain Name consists of the FIDELITY Mark and the surname “Ivanov”. The addition of a surname to a Domain Name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. As such the addition of the surname “Ivanov” does not distinguish the Domain Name from the FIDELITY Mark in any significant way as a person viewing the mark may be confused into thinking the Domain Name referred to a business run by the Complainant with or in respect of an individual called “Ivanov”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s FIDELITY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the FIDELITY Mark or a mark similar to the FIDELITY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
Rather the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant (via the use of the Complainant’s name and UK address) and appears to offer financial services, either in direct competition with the Complainant or as a means of committing fraud upon customers who think that they are dealing with the Complainant. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that the Respondent was aware of the Complainant and its reputation in the FIDELITY Mark at the time the Respondent registered the Domain Name. The Respondent’s Website appears to offer financial services, the Complainant’s area of business, and makes reference to the Complainant (via the use of the Complainant’s name and UK address) on the website. The registration of the Domain Name in awareness of the FIDELITY Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the FIDELITY Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website which appeared to offer financial services, by making reference to the Complainant’s FIDELITY Mark and the Complainant’s UK subsidiary. The only apparent purposes behind the conduct of the Respondent are either to commit fraud upon customers who think that they are dealing with the Complainant or attract customers on the basis of confusion between the Respondent and the Complainant. It appears both from the Domain Name itself and from the Respondent’s Website that it is highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the FIDELITY Mark, and received or intended to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: March 14, 2014
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