The Complainant is FIL Limited, United Kingdom, represented by Maucher Jenkins, United Kingdom.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Brent Burns, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 30, 2021, 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 2, 2021.
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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 19, 2021. 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 BackgroundThe Complainant is a large investment fund manager, that was formerly named and traded as Fidelity International Limited but changed its name to FIL Limited in 2008.
The Complainant offers its services under the FIDELITY mark worldwide and has, together with its subsidiaries and related companies, acquired a considerable reputation and goodwill in FIDELITY and FIDELITY-composite marks in relation to financial services internationally.
The Complainant is the registered proprietor of numerous trademark registrations and applications for FIDELITY and for marks that incorporate FIDELITY, including but not limited to:
- European Union Trade Mark registration no. 3844925 for FIDELITY in classes 16 and 36, filed on May 21, 2004, and registered on September 21, 2005, and
- European Union Trade Mark registration no. 14770598 for FIDELITY INTERNATIONAL in classes 35 and 36, filed on November 5, 2015, and registered on March 22, 2016.
In addition, the Complainant and its subsidiaries and related companies have for many years used a number of different domain names that include the FIDELITY mark and which are used for websites that promote the Complainant’s services provided under the various FIDELITY marks, including but not limited to
The disputed domain name
The Complainant asserts that the disputed domain name is confusingly similar to the FIDELITY marks and, in particular the Complainant’s European Union and United Kingdom trademark registrations for FIDELITY INTERNATIONAL. The disputed domain name consists of the words “fidellity” and “international”, where “fidellity” in the disputed domain name is a misspelling of “fidelity”. The generic Top‑Level Domain (“gTLD”) “.com” is non-distinctive and its presence does nothing to diminish the confusing similarity of the disputed domain name and the Complainant’s FIDELITY marks.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed 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. Furthermore, 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. Rather, the Respondent is using the disputed domain name for commercial gain, which tarnishes the Complainant’s FIDELITY marks.
The Complainant finally asserts that the disputed domain name was registered and has been used in bad faith. The disputed domain name consists of an obvious typo squatting variation of the Complainant’s distinctive FIDELITY INTERNATIONAL trademark and has been used in connection with emails intended to distribute malware or for other illicit purposes.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark FIDELITY INTERNATIONAL since it contains the mark in its entirety, the only difference being the addition of the letter “l”. The gTLD “.com” does not prevent a finding of confusing similarity as it is generally disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate InterestsIt is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the absence of any reply to the Complaint and the way that the Respondent has been and may still be using the disputed domain name does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the Complainant’s use of its trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, according to the Complainant, the Respondent has been using the disputed domain to send emails that were part of a malware distribution scheme. The Complainant has evidenced that such use took place at the time when the Complaint was filed, and so the Panel finds that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to react to the sent emails by creating a likelihood of confusion with the Complainant’s mark, from which the Respondent may in the end be able to generate a revenue or otherwise obtain a commercial gain.
Furthermore, additional circumstances of this case, including that the disputed domain name incorporates a typo of the Complainant’s registered and reputed trademark, that no Response has been filed, and that there appears to be no plausible good faith use that could be made by the Respondent of the disputed domain name, also support a finding of bad faith.
Accordingly, the Panel therefore finds that the requirements of paragraph 4(a)(iii) are also fulfilled in this case.
7. DecisionFor 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
Knud Wallberg
Sole Panelist
Date: November 2, 2021