The Complainant is Fisher Asset Management LLC d/b/a Fisher Investments of Camas, Washington, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States / Shi Lei of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 5, 2018, 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 October 10, 2018, 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 amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to 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 October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 7, 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 investment adviser company 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 seeks to provide investors with appropriate investment solutions, transparent fees, and exceptional service.
The Complainant is the registrant of the domain name , which was created on March 18, 1999, and which the Complainant uses in connection with its primary website. The Complainant is also the registrant of the domain name which was created on February 1, 2016, which redirects to its primary website
The Complainant is owner of at least thirteen trademark registrations throughout the world for the trademark FISHER INVESTMENTS, including among others:
- FISHER INVESTMENTS, (United States Trademark) Registration No. 3,103,881. Registered on June 13, 2006.
- FISHER INVESTMENTS (European Union Trademark) Registration No. 3,338,595. Registered on February 5, 2015.
- FISHER INVESTMENTS (Canada Trademark) Registration No. 896,077. Registered on February 9, 2015.
The Disputed Domain Name was registered on September 21, 2018.
The Respondent is using the Disputed Domain Name in connection with a monetized parking page. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows: Identical or confusingly similar
The Complainant argues that the Disputed Domain Name is confusingly similar to the FISHER INVESTMENTS trademark as it fully incorporates the latter, the only difference being the addition of the characters “www” and the word “events”, neither of which distinguishes the Disputed Domain Name from the FISHER INVESTMENTS trademark. Moreover, the Complainant is the registrant of the domain name which was registered on February 1, 2016. This is clear from the evidence that the Respondent intended to create a domain name that is confusingly similar not only to the FISHER INVESTMENTS trademark but also to the Complainant’s domain name.
Furthermore, the Complainant alleges that the addition of the letters “www” suggests typosquatting and the addition of the word “events” does not negate the confusing similarity between the Disputed Domain Name and the Complainant´s trademark.
Thus, the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark. Rights or legitimate interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name since the Complainant has never assigned, granted, licensed, sold, transferred or authorized the Respondent to register or use the FISHER INVESTMENTS trademark.
The Complainant points out that the Respondent has failed to create a bona fide offering of goods or services since the Disputed Domain Name includes commercial links for third party websites.
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 fact that the Respondent is using the Disputed Domain Name in connection with a monetized parking page shows that the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. Registration and use in bad faith
The Complainant states that the Disputed Domain Name was registered and is being used in bad faith, since 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 Trademark, by an unaffiliated entity can by itself create a presumption of bad faith. The Complainant alleges that the FISHER INVESTMENTS Trademark is widely known since (a) it is protected by at least 13 trademarks registrations in at least five countries or jurisdictions worldwide; (b) it was used more than 40 years ago; (c) the Complainant serves more than 50,000 private clients including Fortune 500 companies, foundations, endowments, and individual investors and (d) the Complainant’s founder is a renowned innovator in the investment theory and the author of several academic studies and finance books.
Moreover, the Complainant argues that given the fame of FISHER INVESTMENTS Trademark it is unlikely that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name.
The Complainant considers that since the Disputed Domain Name is so obviously connected with the Complainant, the Respondent’s actions suggest an “opportunistic bad faith” in violation of the Policy.
According to the Complainant, the fact that the Respondent is using the Disputed Domain Name in connection with a monetized parking page constitutes bad faith.
Furthermore, the Respondent’s motive in registering and using the Disputed Domain Name seems to be to disrupt the Complainant´s relationship with customers or attempt to attract Internet users for potential gains. Both these attitudes constitute evidence of registration and use in bad faith. B. Complainants’ contentions in the amended complaint
The Complainant filed the Complaint on October 5, 2018 naming as the Respondent “Domain Administrator/See PrivacyG”. On October 10, 2018, the Complainant received an email from the Center stating that the Center had received information from Registrar “regarding information” that differed from the first named Respondent. The email from the Center identified the registrant as “shi Lei”.
The Complainant contends that as the change in the registrant occurred only after the Complainant was filed, this attitude constitutes “cyberflight”.
Furthermore, the Complainant informs the Panel that the Respondent is a cybersquatter who has lost at least 15 previous proceedings under the Policy.
The Complainant argues that “cyberflight” constitutes evidence of bad faith. C. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(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 in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s trademark FISHER INVESTMENTS. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s FISHER INVESTMENTS trademark in its entirety; the addition of the term “www” and the word “events” does not prevent a finding of confusing similarity.
The Panel has no difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark FISHER INVESTMENTS. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention.
Furthermore, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. The use of the web page associated with the Disputed Domain Name, which is confusingly similar to a registered trademark, in order to include commercial links to third party website cannot be qualified as a bona fide offering of goods or services.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a) (iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on September 21, 2017 while the FISHER INVESTMENTS trademark was first used more than 40 years ago. Thus, this Panel finds that the Respondent was aware of the Complainant’s FISHER INVESTMENTS trademark.
The fact the Disputed Domain Name fully incorporates the Complainant’s FISHER INVESTMENTS trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name.
The addition of the prefix “www” to a trademark has been recognized as a form of typosquatting, such typosquatting by itself constitutes a clear demonstration of bad faith registration and use of a domain name. (See for instance Joanne Rowling v. Alvaro Collazo,WIPO Case No. D2004-0787). Moreover, it is important to mention that the Complainant owns the domain name which was created on February 1, 2016. This domain name redirects to its primary website and it is regularly used for email communications. Consequently, the Panel considers that adding the generic abbreviation “www” would misdirect Internet traffic looking for the Complainant’s website.
The fact that the Respondent has been held in a significant number of cases to have registered and used other domain names in bad faith, also supports the Complainant’s contention that this has occurred in this case. Further, and although not determinative, the Panel accepts that the Complainant is correct when it contends that the Respondent has used a privacy service with the intention of disguising his identity. This is therefore one of these cases where the use of such a privacy service is a further indicator of bad faith (see section 3.6 of the WIPO Overview 3.0). At the same time, the Panel notes that the masking of identity itself is not cyberflight as the Complainant has contended.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith. 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.
Pablo A. Palazzi
Sole Panelist
Date: November 21, 2018
Full & Egal Universal Law Academy