The Complainant is Fisher Asset Management LLC d/b/a Fisher Investments of Camas, Washington, United States of America (“US” or “United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Sergey of Moscow, Russian Federation. 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 February 14, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2018, 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 February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2018.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 15, 2018. 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 an independent, fee-only investment adviser founded in 1979 by Ken Fisher who is an innovator of investment theory and the author of several academic studies and popular finance books. The Complainant is the registrant of the domain name , which was created on March 17, 1999, and which the Complainant uses in connection with its primary website.
The Complainant holds several trademark registrations for FISHER INVESTMENTS which include the US trademark registration of June 13, 2006 (No. 3,103,881).
Moreover, the Complainant, together with John Wiley & Sons offers, under the “Fisher Investments Press” brand, a series of educational books covering topics ranging from global investment to behavioural finance. For this sake, the Complainant uses an online store under the domain name , which was created on February 4, 2008.
The disputed domain name was created on October 20, 2017. Between January and February 2018 the disputed domain name was used in connection with a variety of websites that offer visitors highly promoted opportunities, such as phone numbers that offer “unbelievable monthly payments,” an “international promotion” that pays “up to $10,000,” and gifts in a “random amount” of “defined crypto currency”.
The Complainant contacted the Respondent about the disputed domain name via emails sent on four separate occasions: October 27, 2017; November 3, 2017; November 29, 2017; and December 6, 2017. The Respondent has never replied to any of these emails. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is identical to its registered mark as it contains the FISHER INVESTMENTS mark in its entirety. According to the Complainant, the top-level domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Moreover, the Complainant emphasises that if the top-level domain has any impact here, it only increases confusing similarity, given that the word “store” is directly related to the Complainant online activity.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the FISHER INVESTMENTS mark in any manner. Furthermore, the Complainant points out that the Respondent’s use of the disputed domain name in connection with a variety of websites offering visitors highly promoted opportunities, such as phone numbers that offer “unbelievable monthly payments,” an “international promotion” that pays “up to $10,000,” and gifts in a “random amount” of “defined crypto currency”, cannot be qualified as “a bona fide offering of goods or services” and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. According to the Complainant, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
Finally, the Complainant contends that the Respondent’s selection of the generic Top-Level Domain (“gTLD”) is a further indication that the Respondent lacks rights or legitimate interests in the disputed domain name.
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark, such as the FISHER INVESTMENTS mark, by an unaffiliated entity can by itself create a presumption of bad faith. Consequently, the Complainant submits that the FISHER INVESTMENTS mark is widely known since i.a. it was first used more than 40 years ago and the Complainant now serves more than 35,000 private clients including Fortune 500 companies, foundations, endowments, and high-net-worth investors. Moreover, the Complainant believes that since the disputed domain name is obviously connected with the Complainant, the Respondent’s actions should be treated as an “opportunistic bad faith” in violation of the Policy. According to the Complainant, the Respondent used the disputed domain name in bad faith which was evidenced by the content of the websites that appeared under the disputed domain name and the choice of the gTLD . The Complainant also emphasizes that the Respondent has never replied to the emails sent by the Complainant after the Respondent’s actions were noticed which is another evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s mark as it fully incorporates the FISHER INVESTMENTS mark. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the gTLD may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Therefore, the Panel finds that the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use its mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name that is identical to a registered trademark to create various websites offering visitors highly promoted opportunities to gain money from unknown sources cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered when the Complainant had already obtained trademark registration for FISHER INVESTMENTS. In the Panel’s opinion, the notoriety of the Complainant’s mark all around the world together with the fact that the disputed domain name is identical with the mark indicate that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
Secondly, the Respondent used the disputed domain name to create various websites offering visitors highly promoted opportunities to gain money. Given the fact that the disputed domain name is identical to the Complainant’s trademark, there is a risk of deception and confusion as to the source and affiliation of the disputed domain name.
In addition, the Respondent failed to respond to any of the Complainant’s emails which regarded the use of the disputed domain name, which is an additional fact substantiating bad faith.
The Panel finds that the conditions of paragraph 4(b)(iv) of the Policy are present in this case.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is 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 name be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: March 28, 2018
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