The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America ("United States") / Tom James of New York, New York, United States. 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 August 16, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2017, 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 August 18, 2017.
The Center verified that the Complaint 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2017.
The Center appointed Theda König Horowicz as the sole panelist in this matter on October 4, 2017. 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 established in 1969 in the United States. It is active in financial and investment services in particular for banks, financial advisers and insurance companies. Over the years, the Complainant has won several awards for its performances in this field. Furthermore, it is the parent company of subsidiaries based in several countries around the world.
It is the owner of several trademark registrations comprising the word FIDELITY, notably:
- European Union Trade Mark ("EUTM") No. 003844925, in international classes 16 and 36, registered on September 21, 2005;
- EUTM No. 010054336, in international classes 35, 36 and 42, registered on July 13, 2012.
The Complainant also holds several domain names containing the word "fidelity", including which hosts its official Internet presence.
The said FIDELITY trademark has been used by the Complainant and its affiliated companies for the above-mentioned services for several years.
The Respondent registered the disputed domain name on April 22, 2017. The disputed domain name was used to send scam emails using the Complainant's name and logo, notably through the email address "[redacted]@". An example thereof is the following e-mail of July 19, 2017, originally sent in German, which is translated hereafter in English:
"Dear […] ,
This e-mail comes from the transfer department of the Fidelity Internation Investment Bank.
Thanks for your quick reply, your ID is still checked, but you must use the Account activation fee of 7500 € (seven thousand five hundred euros), this payment is, To clear the account and be ready be transferred to your Named account somewhere in the world.
We will help you make sure your transfer is complete. Payment details About Moneygram is one of the quickest funds and if you make the payment today, your account will be
And you can start your transfer immediately.
NOTE: You should send the money twice with the same name in different places to easy
Can be picked up.
You are required to pay your online account officer / instructor:
Name: ELKE BENDER
Address: Rauenberger Str # 5
City: Dielheim
Postal Code: 69234
Country Germany
Amount 7500€
Please send the payment receipt for the quick confirmation, remember that you are 2
Send payment dcouments
Thank you for the bank with us !!
CONFIDENTIAL OF FIDELITY INTERNATIONAL INVESTMENT BANK PLC.
These e-mails and all files transmitted with them are confidential and are solely for the use of the person or facility to which they are directed. Dissemination, dissemination or reproduction of this e-mail or the information contained therein is prohibited by any other than the intended recipient or an employee or representative responsible for the delivery of the message to the intended recipient.
©Fidelity International Bank Plc 2017 Disclaimer" 5. Parties' Contentions A. Complainant
The Complainant alleges to have trademark rights over FIDELITY. The disputed domain name can be considered as capturing in its entirety the Complainant's mark and simply adding the generic term "onlines" at the end. The mere addition of this generic term to the Complainant's trademark does not negate the confusing similarity between the disputed domain name and the Complainant's trademark as consistently held by several prior UDRP panels.
The Complainant further states to have exclusive rights to use the FIDELITY trademark in commerce or in connection with the goods and/or services specified in the registration certificates. The Respondent is not sponsored by or affiliated with the Complainant, has not received permission from the Complainant to use the Complainant's trademarks in any manner, including domain names, and is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests.
In this frame, the Complainant underlines that the disputed domain name was used by the Respondent to fraudulently send emails purporting to represent the Complainant, with the Complainant's logo, notifying individuals they won the lottery and they can retrieve their winnings at the bank once they have paid a fee and provided a copy of their identification. The disputed domain name has thus been used to take advantage of the Complainant's trademark, trust and goodwill which clearly fails to constitute a bona fide offering of goods or services.
In this regard, the Complainant draws the attention of the Panel to the fact that the disputed domain name was registered significantly after Complainant filed for registration of its FIDELITY trademark and domain name .
The Complainant finally alleges that its FIDELITY trademark is known internationally due notably to its longstanding use. By registering a domain name incorporating the entirety of its trademark with the generic term "onlines" and to send emails pretending to be the Complainant, the Respondent has demonstrated a knowledge and familiarity with the Complainant's brand and business. The Respondent has registered and used the disputed domain name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. The Respondent has also at the time of the filing of the Complaint employed a privacy service to hide its identity which past UDRP panels have held serves as further evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in 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 showed that it has trademark rights in FIDELITY.
This trademark is reproduced in its entirety in the disputed domain name. As mentioned by the Complainant, the addition in the disputed domain name as a suffix of the term "onlines" is not significant to avoid confusing similarity with the Complaint's trademark.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
In particular, the Complainant has evidenced that the disputed domain name was used in relation to the sending of scam emails in which the identity, trademark and logo are abusively used.
It is obvious that such use was not authorized by the Complainant and cannot be seen as legitimate under the Policy.
The Respondent who could have decided to rebut the Complainant's allegations within the proceedings unsurprisingly remained silent.
Under the circumstances, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.
As already stated above under section 6.B., the Complainant has sufficiently evidenced that the disputed domain name was used in relation to the sending of scam emails in which the Complainant's identity, trademark and logo are abusively used.
This abusive conduct shows with no reasonable doubt that the Respondent knew the Complainant's brand and business at the time of the registration of the disputed domain name.
The use made by the Respondent or the organization behind the registration of the disputed domain is a clear cut case of bad faith use.
Indeed, the Respondent fraudulently sent emails purporting to represent the Complainant, with the Complainant's logo, notifying individuals they won the lottery and they can retrieve their winnings at the bank once they have paid a fee and provided a copy of their identification. The disputed domain name has thus been used to take advantage of the Complainant's trademark, trust and goodwill.
Furthermore, at the time of the filing of the Complaint, the Respondent has employed a privacy service to hide its identity which under the present circumstances is another indication of bad faith registration and/or use, along with the absence of any response by the Respondent.
For the above-mentioned reasons, the Panel thus concludes that the third condition instituted by paragraph 4(a)(iii) of the Policy is fulfilled as well. 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.
Theda König Horowicz
Sole Panelist
Date: October 20, 2017
Full & Egal Universal Law Academy