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 Jiangjiang of Shanghai, China. 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 November 6, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 19, 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 is the parent company of several subsidiaries in the financial services field. It is an independent asset management company which serves investors in countries located across Asia, Europe, the Middle East and South America.
The Complainant has been providing financial services under the FIDELITY trademark, as well as trademarks comprising the mark FIDELITY since 1969.
The Complainant is the owner of the following trademark registrations, among others:
Registration Number
Trademark
Jurisdiction
Class
Filing Date
939820
FIDELITY
China
36
January 28, 1997
4904096
FIDELITY INTERNATIONAL
China
36
May 14, 2009
1997B09886
FIDELITY
Hong Kong, China
36
April 27, 1995
301540278
FIDELITY GROWTH PARTNERS ASIA
Hong Kong, China
36
February 8, 2010
301540287
FIDELITY GROWTH PARTNERS INDIA
Hong Kong, China
36
February 8, 2010
003844925
FIDELITY
European Union
16, 36
May 21, 2004
008870198
FIDELITY GROWTH PARTNERS EUROPE
European Union
36
February 9, 2010
008909921
FIDELITY GROWTH PARTNERS EUROPE
European Union
36
February 10, 2010
In addition, the Complainant owns the following domain names:
Domain Name
Registration Date
August 1, 1996
January 7, 2004
July 4, 1995
The disputed domain name was registered on July 12, 2017. The disputed domain name previously resolved to a website offering industrial machinery. 5. Parties’ Contentions A. Complainant
The Complainant states the following:
(i) Identity or Confusing Similarity:
That it is the owner of several trademark registrations in China and the European Union.
That it has a strong Internet presence through its websites.
That the disputed domain name incorporates the Complainant’s trademark FIDELITY GROWTH PARTNERS ASIA in its entirety, thus being identical to said trademark.
That the disputed domain name simply turns the “asia” portion of the Complainant’s mark FIDELITY GROWTH PARTNERS ASIA into a Top-Level Domain (“TLD”) by adding a period.
(ii) Rights or Legitimate Interests:
That the different trademark registrations owned by the Complainant show that the Complainant has the exclusive right to use the trademark FIDELITY and its variants.
That the Respondent is not, in any way, sponsored by or affiliated with the Complainant.
That the Complainant has not given any permission to the Respondent to use the Complainant’s trademarks and domain names in any manner.
That the Respondent is not commonly known by the disputed domain name.
That the Respondent does not use the disputed domain name to provide a bona fide offering of goods or services, because the website to which it resolves directs Internet users to the Respondent’s website, where milling equipment, cement equipment, mining machinery and crushing machines are being offered.
That the use of the disputed domain name has tarnished and diluted the Complainant’s trademarks.
That the dates of registration of the trademarks of the Complainant significantly precede the registration date of the disputed domain name.
(iii) Registration and Use of Bad Faith:
That the Complainant was established several decades ago, building a worldwide reputation, which is why, at the time when the disputed domain name was registered, the Respondent must have been aware of the Complainant and its brands.
That, based on the goodwill of the Complainant and the famous nature of its trademarks, the Respondent attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, which is identical to several of the Complainant’s trademarks.
That the only feasible explanation for the Respondent’s registration of the disputed domain name is its intention to cause confusion, error and deception among Internet users.
That, taking the foregoing facts into account, any use of the disputed domain name, whether actual or theoretical, should be considered as constitutive of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove that the elements enumerated in paragraph 4(a) of the Policy have been met:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complainant (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s FIDELITY trademarks because it incorporates them in their entirety.
The Complainant alleges that the disputed domain name is identical to the trademark FIDELITY GROWTH PARTNERS ASIA. Previous Panels have found that the TLD of a disputed domain name may be relevant when assessing confusing similarity between a domain name in dispute and the trademarks of a complainant where the applicable TLD and the second-level portion of the domain name in combination contains the relevant trademark (see section 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder),WIPO Case No. D2014-1747; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).
Viewed in its entirety, the disputed domain name is identical to the Complainant’s FIDELITY GROWTH PARTNERS ASIA trademark.
Therefore, the first requirement of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
The Complainant has submitted sufficient evidence to demonstrate its rights over the trademarks FIDELITY in several countries including China, where the Respondent has declared to have its domicile.
The Complainant argued that it has not granted, assigned, or in any way authorized the Respondent to use the FIDELITY trademarks or any variations thereof, and that the Respondent is not sponsored by or affiliated with the Complainant in any way. These assertions were not denied by the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent has not produced any evidence showing any actual bona fide use, or preparations to use the disputed domain name, nor has the Respondent demonstrated that it has been commonly known by the disputed domain name, or that it is making a legitimate, noncommercial or fair use of it.
According to the evidence submitted by the Complainant, which was not rebutted by the Respondent, the website to which the disputed domain previously resolved offered milling and cement equipment, as well as mining and crushing machinery. The fact that the Respondent has registered and used a domain name that entirely incorporates the famous trademarks of the Complainant leads the Panel to infer that the Respondent has intended to free-ride on the goodwill of the Complainant and its famous marks to attract traffic to its website. This cannot be deemed to be a fair or legitimate, noncommercial use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413). In fact, the Respondent’s conduct can cause confusion among Internet users searching for the Complainant and its services (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Respondent has declared to have its domicile in China. The Complainant’s Chinese trademark registrations predate (at least for eight years) the registration of the disputed domain name, showing that the Respondent had constructive notice of the Complainant’s trademarks at the time when it registered the disputed domain name. Actual or constructive knowledge of the Complainant’s trademark rights is a factor supporting bad faith (see Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270).
The Respondent’s conduct has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to its website for commercial gain.
The website to which the disputed domain name resolved offered several goods and services to Internet users. This fact shows the Respondent’s attempt to profit from the disputed domain name at the expense of the Complainant and its trademarks (see Molmed S.p.A. v. Prof. Asif Ahmed,WIPO Case No. D2002-0177; Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd,WIPO Case No. D2011-0315).
No plausible explanation has been produced as to why the Respondent selected the disputed domain name. In the absence of any such evidence, it is reasonable to infer that the Respondent chose the disputed domain name to trade on the goodwill of the Complainant and its trademarks (see eBay Inc. v. SGR Enterprises and Joyce Ayers,WIPO Case No. D2001-0259).
With the above in mind, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: January 2, 2018
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