The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
The Respondent is Domain Administrator, See PrivacyG, United States of America (“United States”) / Leth Broth, United States. 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 August 7, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 14, 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 16, 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 8, 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 is the registered owner of numerous trademark registrations consisting of or containing the term FIDELITY, such as European Union registration no. 3844925 FIDELITY for goods in class 16 and services in class 36, registered on September 21, 2005, which has duly been renewed and is in force.
The Respondent registered the disputed domain name on June 6, 2019.
It results from the undisputed evidence submitted by the Complainant that the disputed domain name is currently used for a website promoting cryptocurrency trading services by a presumed United Kingdom based company. However, no company exists under the company number indicated on that page. The website contains poor grammar and spelling errors, refers to unrealistic financial returns (“In 2017, we made a record of USD 1 million per day”); the contact details provided on that website are false and no telephone number is provided. 5. Parties’ Contentions A. Complainant
The Complainant is an investment fund manager that was founded nearly 50 years ago. It offers its services under the FIDELITY mark, which is protected amongst others in the European Union, including the United Kingdom, where the Respondent claims to be based, according to the address listed on the website to which the disputed domain name resolves. The Complainant claims to have nearly 1,200,000 customers in the United Kingdom and is responsible for looking after assets worth over GBP 149.3 billion.
First, the Complainant contends that the disputed domain name is confusingly similar to its trademark FIDELITY. The only distinctive element within the disputed domain name is the word “fidelity”, which is clearly recognisable within the disputed domain name. The additional elements in the disputed domain name, namely “expert” and “options”, are descriptive of the type of services the Respondent purports to offer, namely expert financial service options.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorised, or permitted the Respondent to register domain names incorporating the Complainant’s FIDELITY marks. Moreover, the disputed domain name is being used in connection with a fraud or phishing activity so that it is apparent that the Respondent intends to profit financially from misleading Internet users through use of the disputed domain name. In the Complainant’s view, the Respondent’s use of the disputed domain name is manifestly intended to lure those consumers to its website under the false impression that they are dealing with the Complainant and/or to take advantage of the Complainant’s reputation and goodwill.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has provided a false address on its website and engaged a domain privacy company to hide its true identity. The provision of false contact information has been widely recognised by UDRP panels as a relevant factor supporting a finding of bad faith. Furthermore, the disputed domain name is being used in connection with a fraud or phishing activity which has been noted by previous UDRP decisions as an indicator of bad faith. In all the circumstances, it is clear for the Complainant that the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s FIDELITY marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must, first of all, establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations consisting of or containing the term FIDELITY, such as European Union registration no. 3844925 FIDELITY for goods in class 16 and services in class 36, registered on September 21, 2005, which has duly been renewed and is in force.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks FIDELITY is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant’s registered trademark FIDELITY (placed at the beginning of the disputed domain name) with the dictionary terms “expert” and “options”, which are totally applicable as descriptive terms of the Complainant and its business activity, namely expert financial service options. The addition of these descriptive terms to the distinctive trademark does not avoid the confusing similarity between the disputed domain name and the trademark (see e.g. Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0645; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP,WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
Finally, and according to UDRP panel consensus, the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
In fact, UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence – which remained uncontested – of such illegal activities. In fact, the Panel considers it illegal to promote cryptocurrency trading services by a presumed United Kingdom based company, while (i) the company number indicated on the website does not exist, (ii) the website refers to unrealistic financial returns (“In 2017, we made a record of USD 1 million per day”), (iii) provides false contact details and (iv) does not indicate any telephone number. In the Panel’s view, such use can neither be qualified a bona fide offering of goods or services (in accordance with paragraph 4(c)(i) of the Policy) nor a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (pursuant to paragraph 4(c)(iii) of the Policy).
Finally, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.
This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution (see WIPO Overview 3.0 at section 3.4). As explained under the second element (section 6.B. above), it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used to promote cryptocurrency trading services by a presumed United Kingdom based company, while (i) the company number indicated on the website does not exist, (ii) the website refers to unrealistic financial returns (“In 2017, we made a record of USD 1 million per day”), (iii) provides false contact details, (iv) does not indicate any telephone number, and (v) uses poor grammar and spelling errors. The Panel is satisfied that the content available under the website to which the disputed domain name resolves is intended to deceive customers. Such use cannot be considered as being in good faith.
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (i) the Respondent originally used a privacy service hiding its identity, (ii) the Respondent did not provide any response with conceivable explanation of its behavior, and (iii) the implausibility of any good faith use to which the disputed domain name may be put under the above circumstances.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy. 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.
Tobias Malte Müller
Sole Panelist
Date: October 22, 2019
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