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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Shenkey Chourasia of Indore, Madhya Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (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 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 November 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 15, 2017.
The Center verified that the Complaint together with the 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 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 across Asia, Europe, the Middle East and South America. Under its trademark FIDELITY, the Complainant provides asset management services.
The Complainant has been providing financial services under the trademark FIDELITY and variants thereof since 1969.
Among others, the Complainant owns the following trademark registrations:
Registration Number
Registration Date
Trademark
Jurisdiction
Class
1239916
September 21, 2003
FIDELITY
India
36
2100049
December 6, 1996
FIDELITY
United Kingdom
36
2179368
January 14, 2000
FIDELITY
United Kingdom
16
4468520
January 21, 2014
F
United States
36
003844925
September 21, 2005
FIDELITY
European Union
16, 36
In addition, the Complainant owns the following domain name:
Domain Name
Registration Date
August 1, 1996
The disputed domain name was registered on September 24, 2016. The disputed domain name previously resolved to a website offering services in competition with those of the Complainant, and currently resolves to a page with the following text: “This Account has been suspended. Contact your hosting provider for more information.” 5. Parties’ Contentions A. Complainant
The Complainant states the following:
(i) Identity or Confusing Similarity:
That the Complainant is the owner of several registrations for the trademark FIDELITY worldwide.
That it has a strong Internet presence through its different websites.
That the disputed domain name incorporates the Complainant’s trademark FIDELITY in its entirety, causing confusion among Internet users and consumers. That, since the addition of the term “ia” may be perceived as a reference to “investment advisory”, the inclusion of said term will increase the risk of confusion between the disputed domain name and the Complainant’s services.
That the relevant part of the disputed domain name is the trademark FIDELITY, which is why the confusing similarity between the disputed domain name and the Complainant’s trademark is evident.
(ii) Rights or Legitimate Interests:
That the registration of the trademark FIDELITY and its variants constitute prima facie evidence of the Complainant’s exclusive rights over said trademark.
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 trademark FIDELITY or any domain names related thereto in any manner.
That the Respondent is not commonly known by the disputed domain name.
That the Respondent has not used the disputed domain name to make a bona fide, noncommercial offer of goods or services, because the website to which the disputed domain name has resolved, has been used to sell goods and services competitive to those of the Complainant.
That the dates of registration of the FIDELITY trademarks significantly precede the registration date of the disputed domain name.
(iii) Registration and Use of Bad Faith:
That the Complainant and its trademarks FIDELITY are known internationally because the Complainant has offered its services under said trademarks since 1969.
That by registering the disputed domain name, which is confusingly similar to the Complainant’s trademarks FIDELITY, and by using the website to which it resolves to sell competing goods and services, the Respondent demonstrated its knowledge of and familiarity with the Complainant’s brands and business.
That it is in not possible to conceive that the Respondent was unaware of the Complainant’s brands at the time of registration of the disputed domain name.
That the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor and that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks a to the source, sponsorship, affiliation or endorsement.
That the Respondent’s hire of a privacy service to hide its identity is further evidence of bad faith registration and use of the disputed domain name.
That it is more likely than not that the Respondent knew of and targeted the Complainant’s trademarks, and that therefore it should be deemed that the registration and use of the disputed domain name were done in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove that the three 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 relevant part of the disputed domain name is comprised of the term “fidelity” which is identical to the trademarks FIDELITY. The incorporation of the term “ia” does not reduce the confusing similarity between said marks and the disputed domain name.
In light of the above, 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 produced evidence proving its rights over the trademarks FIDELITY in several countries, including India, where, according to the Registrar, the Respondent has declared to have its domicile. The Respondent did not prove any rights over the Complainant’s trademarks.
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).
On the contrary, the evidence contained in the case file, which was not rebutted by the Respondent, shows that the Respondent was attempting to divert traffic to a website offering services that compete with those covered by the Complainant’s trademark registrations, therefore increasing the potential for confusion or wrongful association among Internet users (see AltaVista Company v. O.F.E.Z. et al.,WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan,WIPO Case No. D2001-1220; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071).
Given the circumstances of this case, the abovementioned use of the disputed domain name cannot be catalogued as fair, legitimate, or noncommercial. The Respondent is attracting and diverting Internet users to the website to which the disputed domain name resolves, for commercial gain (see Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413).
Since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, to offer services that compete with those of the Complainant, and considering that the Respondent is trying to generate an impression of being affiliated to the Complainant, it is not possible to find that the Respondent has any rights to or legitimate interests in the disputed domain name.
Given the prestige of the Complainant and the fame of its trademarks FIDELITY, the Respondent should not be entitled to register a domain name entirely incorporating said trademarks (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 Complainant’s Indian trademark registration predates the registration of the disputed domain name. This shows that the Respondent had constructive notice of the Complainant’s trademark rights at the time when the disputed domain name was registered. Actual or constructive knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith (see Document Technologies v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270).
Since the website to which the disputed domain name previously resolved comprises offers for services that were in direct competition with those offered by the Complainant, the Panel finds that the Respondent registered and intentionally used the disputed domain name to attract, for commercial gain, Internet users to such website, creating a likelihood of confusion with the Complainant’s trademarks FIDELITY, to profit from the prestige and recognition of the Complainant and its marks (see, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Owens Corning v. NA,WIPO Case No. D2007-1143).
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). The evidence filed by the Complainant shows that the website to which the disputed domain name previously resolved displayed the term “Fidelity Investment Advisory”, a fact supporting the Complainant’s allegations that the addition of the term “ia” may be perceived as “Investment Advisory”, which could increase the risk of confusion among Internet users.
Given the international scope and fame of the Complainant’s FIDELITY trademarks, as well as the preexistence of the trademark registrations of the Complainant, and considering that the website to which the disputed domain name previously resolved comprised offers of services that compete with those of the Complainant, it is reasonable to infer that Respondent knew about the Complainant’s trademarks by the time the domain name in dispute was registered.
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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