The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the "UK"), represented by RGC Jenkins & Co., UK.
The Respondent is George Dyle of "Lagos", Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 18, 2014.
The Center appointed Petter Rindforth as the sole panelist in this matter on September 24, 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 shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain name as confirmed by the Registrar. 4. Factual Background
The Complainant is the owner of the trademark FIDELITY, registered alone or in combination with other words, including but not limited to:
- Community Trademark registration No. 3844925 for FIDELITY (word) in Classes 16 and 36, registered on September 21, 2005;
- UK national trademark registration No. 2100049 for FIDELITY (word) in Class 36, filed on May 13, 1996;
- UK national trademark registration No. 1310766 for FIDELITY INVESTMENTS (word) in Class 36, filed on May 21, 1987;
- Community Trademark registration No. 3844727 for FIDELITY INVESTMENTS (word) in Classes 16 and 36, registered on September 1, 2005;
- UK national trademark registration No. 2100004 for FIDELITY INVESTMENTS (logo) in Class 36, filed on May 13, 1996;
- UK national trademark registration No. 2351340 for FIDELITY INVESTMENTS (logo) in Class 36, filed on December 15, 2003;
- Community Trademark registration No. 3845047 for FIDELITY INVESTMENTS (logo) in Classes 16 and 36, registered on October 20, 2005;
- UK national trademark registration No. 2554033 for FIDELITY INVESTMENT MANAGERS (logo) in Class 36, filed on July 23, 2010;
- UK national trademark registration No. 2583955 for Ŧ ŦIDELITY WORLDWIDE INVESTMENT (logo) in Class 36, filed on 8 June 2011;
- Community Trademark registration No. 9313065 for FIDELITY INVESTMENT MANAGERS (logo) in Classes 35, 36 and 42, registered on February 3, 2011;
- Community Trademark registration No. 9313099 for FIDELITY INVESTMENT MANAGERS (logo) in Classes 35, 36 and 42, registered on April 4, 2011;
- Community Trademark registration No. 10054377 for Ŧ ŦIDELITY WORLDWIDE INVESTMENT (logo) in Classes 35, 36 and 42, registered on August 2, 2012;
- Community Trademark registration no. 10054393 for Ŧ ŦIDELITY WORLDWIDE INVESTMENT (logo) in Classes 35, 36 and 42, registered on July 13, 2012;
- UK national trademark registration No. 2398490 for FIDELITY INTERNATIONAL (word) in Class 36, filed on August 3, 2005;
- Community Trademark registration No. 4579009 for FIDELITY INTERNATIONAL(word) in Classes 16, 35 and 36, registered on July 7, 2006;
- UK national trademark registration No. 2398491 for FIDELITY INTERNATIONAL (logo) in Class 36, filed on August 3, 2005;
- Community Trademark registration No. 4579041 for FIDELITY INTERNATIONAL (logo) in Classes 16, 35 and 36, registered on July 7, 2006; and
- Community Trademark registration No. 4579058 for FIDELITY INTERNATIONAL (logo) in Classes 16, 35 and 36, registered on July 7, 2006.
The disputed domain name was registered on March 7, 2014. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant informs that the Complainant, founded over 40 years ago, is one of the largest and best-known investment fund managers in the world. The Complainant was formerly named and traded as "Fidelity International Limited", but changed its name to "FIL Limited" on February 1, 2008. The Complainant, either itself or through its subsidiaries, offers a full range of financial investment services throughout the world to private and corporate investors. All services have been offered under the trademark FIDELITY and trademarks including FIDELITY, such as FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS and FIDELITY WORLDWIDE INVESTMENT.
The Complainant has a United Kingdom subsidiary, FIL Investment Services (UK) Limited, which is itself one of the largest investment fund managers in the United Kingdom.
The Complainant states that, through the Complainant's substantial business and investment in the promotion of FIDELITY and trademarks incorporating FIDELITY, the Complainant and its subsidiaries and related companies have acquired a very considerable reputation and goodwill in the FIDELITY trademark/s in relation to financial services internationally. As at September 30, 2012, the Complainant 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", 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, the Complainant and its subsidiaries and related companies have regularly and prominently advertised their services under the FIDELITY trademark/s in print media circulated around the world and the international financial services trade press, including inter alia in The Times, The Sunday Times, The Financial Times, The Daily Mail, The Mail on Sunday, The Daily Telegraph, The Economist, Investment Week, Investment Advisor, Investment Trust, Money Observer and What Investment. The Complainant has also invested in sponsored ads as keywords on search engines including Google, Yahoo and MSN.
The Complainant's website at "" has at least a quarter of a million visitors every month. Services are also promoted through websites connected to the Complainant's registered domain names, such as , , , , , , , and .
The Complainant informs that the success and high profile of the Complainant and its subsidiaries and related companies under the FIDELITY trademark/s in the financial services field have given rise to numerous industry awards and praise and recognition from throughout the financial services industry.
The Complainant states that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The first and only distinctive element within the word "fidelity" is identical to the Complainant's trademark FIDELITY and similar the Complainant's other marks with FIDELITY as the dominant distinctive element. The additional descriptive word "group" denotes a group of companies or corporate group, and as such is directly descriptive of the Complainant's corporate structure as a group of related companies.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by , nor is the 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 the Complainant's trademark. The only use is that is linked to a "cgi-bin" page to which access is denied.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. Although the Respondent does not appear to be actively using , the Respondent's passive holding constitutes use in bad faith, as FIDELITY is a well-known trademark. At the time the disputed domain name was registered, the Complainant's FIDELITY trademarks were internationally well-known in respect of the provision of financial and investment services worldwide.
The Respondent's registration and passive holding of the disputed domain name also reflect a deliberate intent to create a nuisance and to interfere with the Complainant's business such that the Complainant or one of its competitors might be persuaded to pay valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name in order to secure its transfer.
The Complainant's representatives sent a demand letter to the Respondent on June 10, 2014, using the contact details given in the WhoIs record, to which no reply was received. The failure of the Respondent to respond to the Complainant's demand letter is a further indication that the disputed domain name was registered and has been used in bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the trademark FIDELITY, registered alone or in combination with other words, in a number of countries.
The relevant part of the disputed domain name is , as it is a well-established practice that the generic Top-Level Domain ("gTLD") suffix (i.e., ".org") may be disregarded for this purpose. See Hoffmann-La Roche Inc. v. UrProxy Domains,WIPO Case No. D2007-0456 ("the relevant comparison to be made is with the second-level portion of each of the Domain Names only […], as it is well-established that the top-level domain names […] should be disregarded for this purpose").
The Panel concludes that the domain name consists of the Complainant's trademark FIDELITY, with the addition of the generic word "group". As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. In this case, the added word – in combination with the trademark FIDELITY – indicates a reference to the FIDELITY group of companies.
The Panel therefore concludes that is confusingly similar to the Complainant's trade mark FIDELITY. B. Rights or Legitimate Interests
Once the complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden of production shifts to the respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
This Panel is satisfied that the Complainant has established a prima facie case. By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the prima facie case that the Complainant has established under this paragraph of the Policy.
There is no evidence in the case file that the Respondent is an authorized agent or licensee of the Complainant's goods and has no other permission to apply for any domain name incorporating the trademark FIDELITY. See Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 ("There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.")
There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. The Respondent's use of to link to a web site with "Common Gateway Interface" (CGI) is, without any further information or documentation from the Respondent, not enough to indicate legitimate interest.
The Panel finds that the Respondent has no rights or legitimate interests in . C. Registered and Used in Bad Faith
The Complainant is a Bermuda based company, referring to trademarks registered within the UK and the European Union, whereas the Respondent appears to be in Nigeria.
However, it appears to the Panel that the disputed domain name is clearly referring to the Complainant, as it consists of the Complainant's trademark FIDELITY, followed by the generic word "group".
Thus, it is clear to this Panel that the Respondent had the Complainant's trademark in mind when the Respondent registered the disputed domain name, and that the addition of "group" was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant's mark and services, indicating that relates to a company closely related to the Complainant, or even the main domain name for the Complainant's group of companies.
The question remains whether has been used in bad faith, considering the fact that the disputed domain name is not actively used, and the Respondent has taken no active steps to sell or contact the Complainant.
As found by previous panels, apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 "[…] the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; 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."
In this case, as stated above, it is clear that the Respondent registered with the Complainant and the Complainant's trademarks and services in mind.
As shown by Annex 10 of the Complaint, the disputed domain name does not resolve to an active web site, only to a very basic site with a "cgi-bin" reference, indicating a link to a script folder for "Common Gateway Interface". Customers searching for information on the Complainant and the Complainant's service may come to the conclusion that there are problems at the Complainant's site, that the Complainant's web information and services are no longer in active use. Such "non-use" by the Respondent can in this Panel's view have the same negative result on the Complainant as active use of a disputing domain name, and amounts to bad faith use.
Also, considering the fact that clearly relates to the Complainant, the Panel concludes that the Respondent registered the disputed domain name in bad faith, with plans to use it in bad faith.
See FIL Limited v Williams Murray,WIPO Case No. D2013-0508: "Secondly, the Respondent must have appreciated that any website it might establish at the Domain Name would attract Internet users looking for the Complainant, and that if it did create such a website, it would probably come to the attention of the Complainant fairly quickly (adding "Fidelity Investment" after its name in the WhoIs particulars would only have made that happen sooner rather than later)", see also Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131 ("it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate").
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 the Complainant.
Petter Rindforth
Sole Panelist
Date: October 6, 2014
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