The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
The Respondent is WeiHongWei, Ling Bao Jiu Gong Wang Luo Ke Ji You Xian Gong Si (卫红卫,灵宝九宫网络科技有限公司), China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On August 14, 2019, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On August 15, 2019, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese 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 18, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 25, 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 an investment fund manager, formerly named Fidelity International Limited. The Complainant offers its services under the brand name FIDELITY. It holds multiple trademark registrations including European Union trademark registration number 3844925 for FIDELITY, registered on September 21, 2005, specifying goods and services in classes 16 and 36, including financial services; and United States trademark registration number 3092353 for FIDELITY, registered on May 16, 2006, specifying goods and services in classes 9, 16, 35, 36 and 41, including financial services. The Complainant also holds European Union trademark registration number 10054377 for an F in square device and FIDELITY WORLDWIDE INVESTMENT logo, registered on August 2, 2012, specifying services in classes 35, 36 and 42, including financial services. All these trademark registrations remain current. The Complainant and its affiliates use various domain names that begin with the word “fidelity”, followed by other English words, in connection with websites that promote their financial services.
The Respondent is an individual resident in China named Wei Hongwei, and a Chinese company, whose name may be translated as Lingbao Jiugong Network Technology Co. Ltd.
The disputed domain name was registered on April 3, 2019 and the disputed domain name was registered on April 4, 2019. They both resolve to a website in English that is titled “Fidelity Token” and that prominently displays the Complainant’s F in square device and FIDELITY WORLDWIDE INVESTMENT logo. The website claims to be operated as part of the Fidelity Investment Group and claims that its founder, year of establishment and headquarter location are all those of the Complainant’s actual sister company, FMR LLC. The website ostensibly promotes a token for use with cryptocurrency services. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the FIDELITY marks. Their only distinctive element is the word “fidelity”, which is clearly recognisable within the disputed domain names and which is identical to the Complainant’s FIDELITY trademarks or to the main distinctive element within them. The only additional elements in the disputed domain names are the descriptive elements “ok” or “token” and a non-distinctive hyphen which merely denotes the separation of word elements.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorised or permitted the Respondent to use its FIDELITY marks. The Respondent is not commonly known by the disputed domain names, and is not using the disputed domain names or a name corresponding to them 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 names, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark. The Respondent is making unauthorised use of the Complainant’s FIDELITY marks, in particular, the F in square device. The disputed domain names are being used in connection with a fraud or phishing activity.
The disputed domain names were registered and are being used in bad faith. Taking the reputation of the Complainant and its activities into account, as well as the use by the Respondent of the Complainant’s registered trademarks in the disputed domain names and on the Respondent’s websites, it is inconceivable that the Respondent, an entity purportedly engaged in the same industry as the Complainant, would not have known of the Complainant or its FIDELITY marks before it registered the disputed domain names. In all the circumstances, it is clear that the Respondent has used the disputed domain names to intentionally attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s FIDELITY marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for each disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the website to which the disputed domain names resolve is in English; the disputed domain names contain English words; and it would be costly and cumbersome for the Complainant to translate the Complaint.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (see, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293).
The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain names resolve is also in English, from which it is reasonable to conclude that the Respondent understands that language. Further, the Center has sent all communications in this proceeding to the Parties in both Chinese and English but the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the FIDELITY mark.
The disputed domain names wholly incorporate the FIDELITY mark as their respective initial elements. The disputed domain names also include the letters and punctuation “-ok” or “t-oken”. However, regardless of whether these letters are considered to form English words or not, the FIDELITY mark is clearly recognizable in both disputed domain names.
The disputed domain names also include the generic Top-Level Domain (“gTLD”) suffix “.com”. As a mere technical requirement of domain name registration, these may be disregarded in the comparison of a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate 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.
As regards the first and third circumstances set out above, the disputed domain names resolve to a website that displays one of the Complainant’s trademarks, falsely claims to be affiliated with the Complainant and promotes a financial service. The Complainant submits that it has not authorised or permitted the Respondent to use its FIDELITY marks. Therefore, the Panel does not find this to be a use of the disputed domain names in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names. Therefore, the Panel does not consider that the facts of this dispute fall within the circumstances of paragraph 4(c)(i) or (iii) of the Policy.
As regards the second circumstance, the Respondent’s names are “WeiHongWei”, “Ling Bao Jiu Gong Wang Luo Ke Ji You Xian Gong Si” not the disputed domain names, nor even “Fidelity”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] website or location.”
With respect to registration, the disputed domain names were only registered in 2019, many years after the registration of the Complainant’s FIDELITY trademark. Each disputed domain name wholly incorporates that trademark as its initial element. The disputed domain names resolve to a website that prominently displays the Complainant’s F in square device and FIDELITY WORLDWIDE INVESTMENT logo, which gives the Panel reason to infer that the Respondent was aware of the Complainant, its trademarks and its services at the time of registration of the disputed domain names earlier this year. The Panel finds that the Respondent deliberately chose to register the Complainant’s trademark in the disputed domain names in bad faith.
With respect to use, the Respondent uses the disputed domain names, which are confusingly similar to the Complainant’s FIDELITY trademark, to resolve to a website that falsely claims to be affiliated with the Complainant and promotes a financial service. The Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names and be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: October 4, 2019
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