Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
Respondent is WhoisGuard Protected, Panama / Evans Peter, Metranix, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2020, 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 Complainant on February 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 27, 2020. 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 Respondent of the Complaint, and the proceedings commenced on March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2020. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 2, 2020. 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 Complainant is a Bermudian company specialized in investment fund management. Until February 1, 2018, it was named “Fidelity International Limited”. Complainant offers financial investment services throughout the world to private and corporate investors. Complainant benefits from an important visibility on the Internet, having banners and sponsored contents on many financial websites. Complainant was founded nearly 50 years ago and developed its activity under FIDELITY trademarks or trademarks at least including the term “Fidelity”. It owns many trademarks all around the world, including the following ones: - European Union registration no. 3844925 for FIDELITY in Classes 16 and 36, registered on September 21, 2005, and duly renewed since then; Complainant is also the owner of several domain names using FIDELITY trademarks, namely: - The disputed domain name was registered on January 15, 2020 and resolves to a website displaying Complainant’s trademark and offering investment services. 5. Parties’ Contentions A. Complainant First, Complainant claims that the disputed domain name is confusingly similar to its trademarks. It alleges that the distinctive part of the disputed domain name is “fidelity” which is the first element and is identical to its FIDELITY trademarks. It further argues that the addition of the terms “investment” and “inc” are descriptive since it refers to Complainant’s field of activity and refers to the fact that Complainant is an incorporated company. It considers that neither those additional elements, nor the suffix “.com” is sufficient to dismiss the risk of confusion. Second, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. It did not authorize Respondent to use its FIDELITY trademarks. Respondent is neither making a bona fide offering of goods or services nor a legitimate and noncommercial fair use. Complainant argues that Respondent is clearly making an unauthorized use of Complainant’s trademarks since it uses the trademarks in the disputed domain name and on its website. Complainant also alleges that the disputed domain name is used in connection with a fraud or phishing activity. Furthermore, the address indicated by Respondent seems to be false and Respondent’s company is referenced as being located at another address, according to Google results. For the purpose of proving fraud, Complainant also claims that Respondent is referred, in a White Paper communicated in the Annexes to the Complaint, as being a “trading company in Manchester England”. In addition, the address indicated on the website to which the disputed domain name points is different from the latter. Respondent would have copy pasted the address appearing on its website from another one. Also, Complainant adds that the social networks bottoms of Respondent’s websites are inactive. The transaction numbers are inconsistent regarding the date of registration of the disputed domain name. The website contains various English spelling and grammatical errors that would not be expected from a legitimate company. Complainant then concludes that Respondent is not making an authorized use of FIDELITY trademarks but tries to attract Complainant’s consumers. Third, Complainant alleges the disputed domain name was registered and used in bad faith. It first argues that Respondent does not seem to have any commercial interest in an English speaking country since it is from Nigeria. Complainant adds that FIDELITY trademarks are widely known including in the United Kingdom and regarding the fact that Respondent seems to be active in the same domain, it could not have ignored Complainant’s trademarks. According to Complainant, Respondent was clearly aware of its existence and wanted to create a risk of confusion. Furthermore, Complainant argues that Respondent gave false contact details on its website and to the Registrar and Respondent did not show any intended use of the disputed domain name in good faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules provides that “[a] Panel shall 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”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0. The Panel finds that Complainant has duly demonstrated it has rights in the FIDELITY sign including various European Union Trade Marks. The disputed domain name Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is commonly considered as being a technical element that does not challenge the confusing similarity. See, ALSTOM v. Ahmed El Shaweesh, DnArab.com,WIPO Case No. D2019-1796: “The extension “.com” is considered as a technical element and has consequently no distinguishing effect”. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s FIDELITY trademarks. Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. Complainant argued that it did not give any authorization nor license to Respondent to use its trademarks and register the disputed domain name. Previous UDRP panel already found that a respondent had no rights or legitimate interests in registering a domain name using the FIDELITY trademarks, in a similar case. See, Fidelity International Limited v. Bryan Jeong, bksoft,WIPO Case No. D2019-0151 (“The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks”). In this case, Respondent registered the disputed domain name without authorization, but is also using the disputed domain name in the same field of activity as Complainant. Respondent is not linked to Complainant’s activity so it has no legitimate interest to do so. Respondent would have had the opportunity to show the contrary but did not respond to Complainant’s contentions. Panel therefore finds that Respondent had no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Panel finds that Complainant duly proved that Respondent registered the domain name in bad faith. Indeed, Respondent when registering the disputed domain name could not have ignored the FIDELITY trademarks. A quick search on the Internet reveals Complainant’s official websites and Complainant’s references. Furthermore, Complainant has shown that Respondent used a false identity to register this disputed domain name. It appears that Respondent mentioned different contact information on its website and to the Registrar and the fact that Respondent did not respond to this Complaint can legitimately constitute that it registered the disputed domain name in bad faith. Furthermore, Respondent is using the disputed domain name in link with the same field of activity as Complainant. Finally, Respondent uses Complainant’s trademarks in the disputed domain name, in addition to the dictionary terms directly linked to Complainant’s activity and is using its website for the same activity. In the light of all those elements, Panel finds that the disputed domain is used in bad faith and that Respondent is intentionally attempting to attract Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith. Complainant has therefore satisfied 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 Nathalie Dreyfus
- European Union registration no. 14937395 (FIDELITY logo) in Classes 35, 36, 38, 41, and 42, registered on August 24, 2016;
- European Union registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, registered on September 1, 2005, and duly renewed since then;
- European Union registration no. 12691432 for FIDELITY WORLDWIDE INVESTMENT in Classes 35, 36 and 42, registered on July 23, 2014;
- European Union registration no. 14770598 for FIDELITY INTERNATIONAL in Classes 35 and 36, registered on March 22, 2016;
- European Union registration no. 14937361 (FIDELITY INTERNATIONAL logo) in Classes 35, 36, 38, 41 and 42, registered on August 24, 2016;
- European Union registration no. 14939854 (F FIDELITY INTERNATIONAL logo) for in Classes 35, 36, 38, 41 and 42, registered on August 24, 2016;
- European Union registration no. 10054377 (FIDELITY WORLDWIDE INVESTMENT logo) in Classes 35, 36 and 42, registered on August 2, 2012;
- European Union registration no. 10054393 (FIDELITY WORLDWIDE INVESTMENT logo) in Classes 35, 36 and 42, registered on July 13, 2012;
- European Union registration no. 4579009 for FIDELITY INTERNATIONAL in Classes 16, 35 and 36, registered on July 7, 2006 and duly renewed since then.
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Sole Panelist
Date: April 16, 2020
Full & Egal Universal Law Academy