The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Erwin Sager, Serbia. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, 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 8, 2019, 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 13, 2019.
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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 26, 2019. 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, one of the largest investment fund managers in the world, has used and has owned registrations covering the FIDELITY trademark for many years, for example European Union (“E.U”) Registration No. 3844825 for FIDELITY, registered on September 21, 2005. It utilizes the trading name Fidelity International. The Respondent registered the disputed domain name on March 13, 2019. Although the disputed domain name currently does not resolve, the Respondent had used the disputed domain name to offer a website depicting the offerings of a fund management company and purporting to originate with Fidelity International. The Complainant asserts that the website is part of a phishing or malware scheme. 5. Parties’ Contentions A. Complainant
The Complainant asserts it is the largest and best-known investment fund manager in the world. It offers financial services under the FIDELITY brand worldwide, using trademarks that incorporate the Fidelity name, including FIDELITY, FIDELITY INVESTMENTS, and FIDELITY INTERNATIONAL (the “FIDELITY Marks” or the “Marks”), either through itself, its subsidiaries, or through related companies, including its United States of America. ‘sister’ company, FMR LLC. It owns registrations for the Marks, including E.U. Registration No. 3844925 for FIDELITY, and E.U. Registration no. 3844727 for FIDELITY INVESTMENTS.
The Complainant further asserts it has invested substantially in advertising and promoting its services under the FIDELITY Marks, in Europe and internationally, in print and online. The Complainant asserts use of various FIDELITY domain names to promote services under the FIDELITY Marks including , , and , which websites display use of the FIDELITY Marks in relation to a broad range of financial services, including fund management.
The Complainant asserts the disputed domain name is confusingly similar to the FIDELITY Marks. The only distinctive element within the disputed domain name is the word “fidelity”.” The additional term “int” is a well-known abbreviation of the word “international,” and therefore refers to the Complainant’s trading name, Fidelity International.
Accordingly, the average consumer encountering the disputed domain name would assume that it links to a website that is connected to the Complainant, and the mere addition of generic or descriptive terms does not avoid confusion between the disputed domain name and the Complainant’s Marks.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not authorized or permitted to use the Complainant’s FIDELITY Marks. The Respondent is not making noncommercial or fair use of the disputed domain name or using it in connection with bona fide offering of goods or services.
The Complainant provided printouts from the Respondent’s website, which content appears to promote a financial firm named Fidelity International. However, all contact information on the website is fictitious, as are the names of various individuals identified as employees of the Respondent, and references to service offerings. A substantial amount of the text is rife with spelling, grammatical, and formatting errors. The Complainant asserts that this type of careless, deceptive website is consistent with attempted fraud or phishing activities.
The use of the well-known FIDELITY Marks in connection with a phishing scheme, is an example of bad faith registration. The Respondent has used the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant provided extensive evidence of its use and registration of the FIDELITY Marks, which use and registration easily pre-dating the registration of the dispute domain name.
The disputed domain name incorporates the Complainant’s FIDELITY mark in its entirety. The Panel agrees with the Complainant that “int” is a common abbreviation of the word “international.” The addition of “-int” does not prevent a finding of a confusing similarity between the disputed domain name and the Complainant’s FIDELITY Marks.
As UDRP panels typically disregard the generic Top-Level Domain (“gTLD”) in which a domain name is registered, (in this case, “.net”), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered FIDELITY trademark.
Therefore, the Complainant has established the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the trademark FIDELITY, and showing that the Disputed Domain Name is confusingly similar to this trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name even if it has 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 misleading divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not answer the Complaint. Consequently, it did not provide any evidence or allege any circumstances to establish that it has rights or legitimate interests in the domain name.
The Complainant has not authorized or permitted the Respondent to use its FIDELITY Marks. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. As discussed further below, the Respondent is not using the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s FIDELITY Marks.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied. C. Registered and Used in Bad Faith
The Respondent’s website no longer resolves. The print-outs of the Respondent’s website annexed to the Complaint depict, in part, a landing page in which the name “Fidelity International” is the dominant element. Business jargon is haphazardly cut-and-pasted into a business website template. The intended effect seems to be to mimic a typical business website, at least to those who do not read the site carefully. A closer inspection reveals what may be certain inside jokes. For example, the (fictitious) CEO of Fidelity International is identified as Adam Richmon (A Dam Rich Mon). One page is festooned with the quote:
“Money is loved when they are held in safe hands, And we love our hands.”
What is not funny is that the domain name is configured for email. A recipient of an email from an address ending in “@”, who then quickly inspects the home page prominently displaying a “Fidelity International” logo, might well be deceived that the email originated with the Complainant.
The Complainant asserts that sloppy haphazard fictitious sites tend to be used for malware and/or phishing purposes. While that particular motivation has not been proven conclusively, that is not necessary for the Panel to conclude that, in view of the Complainant is well-known FIDELITY trademark in connection with fund management, the Respondent’s creation of a fictitious fund management website with the “Fidelity International” heading, can only be a bad faith attempt by the Respondent to disrupt the Complainant’s business in some way, or to take advantage of the Complainant’s good will and reputation. The provision of false contact information in both the WhoIs database and on the website itself is further evidence of that conclusion.
The Panel finds that the Respondent 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.
Martin Schwimmer
Sole Panelist
Date: October 10, 2019
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