The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”), internally represented.
The Respondent is Charles Van Renynghe, Fidelity Finance GmbH of Zug, Switzerland. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with Tucows Inc. and the disputed domain name is registered with Ascio Technologies Inc. (the “Registrars”). The foregoing domain names shall be collectively referred to as the "Disputed Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2015. On July 22 and July 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On July 22 and July 28, 2015, the Registrars transmitted by email to the Center their verification responses 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 proceeding commenced on July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2015.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 2, 2015. 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 was founded over 40 years ago, and provides investment fund management services around the world. The Complainant’s former name was Fidelity International Limited, but it changed its name to FIL on February 1, 2008. The Complainant has registered trade mark rights in FIDELITY, FIDELITY INVESTMENTS and other trade marks which incorporate the word “fidelity”. The Complainant and its subsidiaries also own and use numerous domain names that incorporate the FIDELITY mark.
The Disputed Domain Names were registered by the Respondent on January 26, 2012. All of the Disputed Domain Names resolve to a Dutch webpage which simply advertises the domain name and web hosting services of Argeweb. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Complainant has been in business for over 40 years and is one of the best-known investment fund managers in the world. The Complainant and its FIDELITY marks have also generated a considerable reputation and goodwill internationally. The Complainant has been offering services under the FIDELITY mark and has been regularly advertising its services under the FIDELITY mark for over 40 years, and has placed banners and sponsored content on at least 35 different third party financial and corporate websites. It has also won numerous industry awards. The Complainant and its subsidiaries have also been operating their business under various domain names which incorporate the FIDELITY mark, the earliest of which was registered in 1996. Therefore, the Respondent must have been aware of the Complainant’s FIDELITY mark at the time it registered the Disputed Domain Names.
(b) The Disputed Domain Names are confusingly similar to the Complainant’s registered trade marks, including its FIDELITY mark. The word “finance”, which appears in the Disputed Domain Names, is merely descriptive and does nothing to distinguish the Disputed Domain Names from the Complainant’s mark. It may even add to the confusing similarity, since the Complainant provides financial and investment services under its FIDELITY marks.
(c) The Disputed Domain Names do not currently resolve to any substantive content. There is therefore no evidence that the Respondent is using, or has made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Respondent is also not known by the Disputed Domain Names, and the Complainant has never authorised the Respondent’s use of its FIDELITY mark.
(d) The Respondent has registered and has been using the Disputed Domain Names in bad faith as the Respondent must have been aware of the Complainant’s FIDELITY mark at the time of registration of the Disputed Domain Names. The Complainant’s FIDELITY mark is internationally well-known in the financial and investment industry, including in Switzerland where the Respondent is based. The Disputed Domain Names also incorporate the word “finance”, which makes it apparent that the Respondent knew of the Complainant and its FIDELITY mark and the Respondent’s registration was driven by its knowledge. The Disputed Domain Names are inherently misleading, and there can be no conceivable legitimate use of them by the Respondent. The Respondent’s registration and passive holding of the Disputed Domain Names show an intent to interfere with the Complainant’s business and a desire to sell the Disputed Domain Names to the Complainant or one of its competitors for valuable consideration.
(e) On June 3, 2013 the Complainant also sent a demand letter to the Respondent. No response was ever received. This is further indication that the Respondent registered and has been using the Disputed Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the FIDELITY mark, and other marks that incorporate FIDELITY (e.g., FIDELITY INTERNATIONAL), based on its Community Trade Mark, Swedish and UK trade mark registrations.
The Disputed Domain Names incorporate the Complainant’s FIDELITY mark in its entirety, the only difference being the word “finance”. The word “finance” is a generic term. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see See Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that “fidelity” is the distinctive component of the Disputed Domain Names and the addition of the word “finance” does nothing to distinguish them from the Complainant's trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extensions, in this case “.asia”, “.biz”, “.info”, “.mobi”, “.org” and “.tv”, may typically be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the FIDELITY mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the FIDELITY mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) that, before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Names. The Panel notes that the Respondent has listed his organisation as “Fidelity Finance GmbH”. No evidence has been submitted in relation to this entity save for a statement from the Complainant that Fidelity Finance GmbH appears to have gone into liquidation in 2012, and that there appears to be no connection between this company and the Respondent.
The Disputed Domain Names each resolve to a webpage in Dutch, which advertises the domain name and web hosting services of Argeweb. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services, or that it is making legitimate, noncommercial or fair use of the Disputed Domain Names, without the intent to misleadingly divert Internet users from the Complainant’s website and/or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The passive holding of a domain name may amount to bad faith registration and use when it is difficult to imagine any conceivable future use of the domain name that would be legitimate and would not infringe a complainant’s well-known mark or would not amount to unfair competition (See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Other circumstances which have been found to amount to bad faith registration and use include:
(a) the fact that a complainant’s trademark has a strong reputation and has been used over a long period of time; and
(b) the absence of evidence of any actual or contemplated good faith use.
(see Telstra Corporation Limited v. Nuclear Marshmallows, supra; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
The Panel accepts that it is likely the Respondent was aware of the Complainant’s FIDELITY mark at the time of registration of the Disputed Domain Names, as the Complainant is well-known worlwide and has been in operation for many years. It also cannot be mere conincidence that the Respondent has used the word “finance” in the Disputed Domain Names, which is the same indusry in which the Complainant operates. The Respondent has also not made any submissions or provided any evidence to show any contemplated good faith use of the Disputed Domain Names.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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, namely , , , , , be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: September 16, 2015
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