The Complainant is FIL Limited of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by RGC Jenkins & Co., London, UK.
The Respondent is PL Corp of Overland Park, Kansas, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2014, 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 July 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August, 7, 2014.
The Center appointed Christian Schalk as the sole panelist in this matter on August 20, 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. The language of the proceedings is English. 4. Factual Background
The Complainant is a large well-known provider of financial investment services, which is active in this field for more than 40 years. The Complainant has over 660.000 customers only in the UK and manages for them financial assets, which are worth more than USD 232 billion. In the US, customers have entrusted the Complainant assets of an overall value of more than USD 3 trillion.
The Complainant’s business is carried out under brands such as FIDELITY, FIDELITY INVESTMENTS or FIDELITY WORLDWIDE INVESTMENTS. Since 2001, the Complainant and its related companies and subsidiaries have been trading regularly and prominently also under the name FUNDSNETWORK in relation to the provision of investment platform services. These services have received a broad media coverage around the world and in the financial service trade press. Furthermore, the Complainant has placed banners and sponsored content including reference to the FUNDSNETWORK trademark on more than 30 financial and corporate websites targeting investors and financial advisors around the world. The Complainant’s international reputation has been recognized also in FIL Limited v. Eliot Evans,WIPO Case No. D2014-0259.
The Complainant owns among others the following trademarks:
- UK trademark registration No. 2447480 for FUNDSNETWORK, application date February 21, 2007, covering services in International Class 36;
- European Community Trademark registration No. 6181093 for FUNDSNETWORK, application date August 8, 2007, covering services in International Class 36;
The Complainant owns since August 12, 1999 also the domain name which is directed to the website page of . There, the Complainant provides information on its “Fundsnetwork” – services. The Complainant alleges that since 2006, more than 4.5 million Internet users have reached this website via the domain name .
The Complainant’s US sister company FMR LLC owns and uses the domain name since June 30, 1994.
The Respondent registered the disputed domain name on September 11, 2013. It resolves to websites such as of “”; “”; “” and “”. On each of the websites, the following links are prominently displayed in the center of the website: “Payday loans”, “Cash Advances”, “Fast Cash”, “Online Payday Loans” and “Payday Advance”. Some of the websites also show further links on the left side, which apparently resolve to various provider of any kind of financial services.
The Complainant sent on January 20, 2014 a cease and desist letter to the Respondent requesting the transfer of the disputed domain name. However, the Respondent never replied to it. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The Complainant argues in this context that the disputed domain name consists of the term “fundsnetwork”, the abbreviation “info” and the generic Top-Level Domain (“gTLD”) suffix “.com”. Especially the first element is identical to the Complainant’s FUNDSNETWORK trademark while the element “info” is just a standard abbreviation for the descriptive- and therewith non-distinctive word “information”. The Complainant explains in this context that neither the descriptive abbreviation “info” nor the gTLD suffix “.com” distinguishes the disputed domain name from the Complainant’s FUNDSNETWORK trademark.
The Complainant believes that given the reputation of the Complainant’s investment business under the FUNDNETWORK marks, the disputed domain name is likely to be understood as denoting of a website of or that is in some way associated with, authorized or endorsed by the Complainant or its related companies.
The Complainant alleges also, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Here, the Complainant argues that the Respondent is not commonly known by the disputed domain name, that the Respondent is not using it in connection with a bona fide offering of goods or services and that the Respondent is not making any legitimate noncommercial 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 Complainant asserts in this context that the disputed domain name is being used to re-direct Internet users to a pay-per click landing site hosted at various other domain names including , , and . The links displayed on the websites to which these domain names resolve relate to lending services, which are financial services by nature. The Complainant emphasizes that these services fall within the same broad field in which the Complainant and its related companies and subsidiaries trade under the FUNDSNETWORK marks inter alia in the US where the Respondent is based.
The Complainant believes that the Respondent is also profiting from click-through revenues arising from these links. The Complainant argues in this context that the attractiveness of the disputed domain name as an address for a pay-per-click landing page is based on the near identity of the element “fundsnetwork” with, and its likelihood to be mistaken for, the Complainant’s FUNDSNETWORK marks. The Complainant concludes therefore, that the Respondent has registered the disputed domain name in order to gain financially from the confusing similarity of the disputed domain name with the Complainant’s FUNDSNETWORK marks. The Complainant refers in this context to previous UDRP decisions such as ACCOR v. Steve Kerry/North West Enterprise, Inc.,WIPO Case No. D2006-0649 and mVisible Technologies Inc., v. Naviagation Catalyst Systems, Inc,WIPO Case No. D2007-1141, where it has been concluded that such activities do not amount to bona fide commercial use.
The Complainant alleges moreover, that the disputed domain name was registered and is being used in bad faith. The Complainant believes that the Respondent must have been aware of the Complainant’s FUNDSNETWORK marks at the time the disputed domain name was registered given the substantial worldwide use and reputation of the Complainant’s FUNDSNETWORK marks and the broad presence of the Complainant and its group companies in the media as well as on the Internet.
The Complainant asserts also that by using the disputed domain name in respect of a pay-per-click landing page hosting links to third-party providers of financial services it is clear that the Respondent has intentionally set out to attract, for commercial gain, Internet users to its website by creating likelihood of confusion with the Complainant. The Complainant is also convinced that given its International reputation the registration of the disputed domain name by the Respondent was not coincidental but was driven by knowledge of the Complainant’s FUNDSNETWORK marks and of the activities of the Complainant and its group companies. The Complainant maintains further that the Respondent’s failure to respond to its cease and desist letter is also an indication of the Respondent’s bad faith behavior and cites General Electric Companny v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087 and Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 to support its argument.
The Complainant argues finally that it must have been obvious to the Respondent that the Complainant would object to any use of the disputed domain name by the Respondent and that the Complainant itself or one of its competitors would be prepared to pay a substantial amount of money for the transfer of such a domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term “fundsnetwork”. The disputed domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Wikimedia Foundation Inc. v. commens, Nan Jiang,WIPO Case No. D2009-1699).
In this case, the term “info” has no distinctive character since it is a standard abbreviation for the descriptive word “information”. Therefore, the only distinctive element of the disputed domain name consists of the term “fundsnetwork”, which is identical to the Complainant’s trademark.
In addition, the “.com” gTLD suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with FUNDSNETWORK in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). B. Rights or Legitimate Interests
According to the material the Complainant has brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant, nor has the Complainant granted the Respondent a license to use its trademark.
Furthermore, the Respondent has not rebutted the Complainant’s allegations on the Respondent’s lack of rights or legitimate interests, and has not provided the Panel with any explanations as to whether this is the case or not, or whether there are indeed legitimate reasons for the choice of the disputed domain names. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554). The Respondent apparently has re-directed the disputed domain name to a pay-per-click landing site hosted at various other domain names such as , , and . All these domain names resolve to websites, which prominently display links to financial services. Given the International reputation of the Complainant as a financial service provider, Internet users expecting the Complainant’s services behind such links will click on them, which each time generates pay-per-click revenue. Depending on the frequency of the use of such links by Internet users, such links can generate a considerable amount of money presumably to be shared between the concerned registrar and either the domain name owner or a third person.
Given the reputation of the Complainant’s trademark, the Panel believes that the only reason why the disputed domain name has been directed to a website with pay-per-click links was, to capitalize on the reputation and goodwill established by the Complainant in order to redirect Internet traffic intended for the Complainant away from it to the website to which the disputed domain name resolves in order to create income. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.
The Panel finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of a domain name:
(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 registrations to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, for the following reasons:
It is a principle considered under prior UDRP decisions (see Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.
The Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the disputed domain name. The Complainant is a well-known International financial service provider. The distinctive part of the disputed domain name features one of the most important trademarks of the Complainant under which it markets financial services also in the US where the Respondent appears to be located. Furthermore, the disputed domain name resolved to websites which display links to financial service providers.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name, which fully contains the Complainant’s FUNDSNETWORK trademarks. These trademarks are also featured in the Complainant’s domain names and , which are apparently frequently used in the context of the Complainant’s online activities and which resolve both to the Complainant’s main website. The addition of the term “info” in the disputed domain name may therefore let Internet users believe that they find information on the Complainant’s services when they either type the disputed domain name in their Internet browser or find it as part of a link in a search engine. It can also be that Internet users who search for the services of the Complainant’s, may type freestyle addresses that combine trademarks and descriptive words (for instance, “Fundsnetwork” and “info”) hoping to narrow down their search results. In both cases, when such Internet users get directed to the websites to which the disputed domain name resolves, they find links for financial services. This may let them believe that they have somehow reached a website of the Complainant or one of its related companies while in fact they end up on websites of one of the Complainant’s competitors.
However, the Panel believes that the Respondent may nevertheless also benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal or on a link (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Furthermore, the Respondent’s behaviour may also enable others, the owners of the websites which are linked with the website to which the disputed domain name resolves, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the use of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also third parties to reap the profit of such wrongful conduct (see also Luigi Lavazza S.p.A.v. Satoshi Shimoshita,WIPO Case No. D2011-1299; The Proctor & Gamble Company v. N,WIPO Case No. D2010-0357 and Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Furthermore, the Respondent did not reply to the cease and desist letter sent by the Complainant but continued its bad faith use of the disputed domain names even after receipt of the Complainant’s cease and desist letter. Such behavior is considered by the Panel as further proof of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith, WIPO Case No. D2010-0561). 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.
Christian Schalk
Sole Panelist
Date: September 2, 2014
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