The Complainant is FIL Limited, United Kingdom (or “UK”), represented by Maucher Jenkins, UK.
The Respondent is Stewart Lawton, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, 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 December 9, 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 December 10, 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2022.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 26, 2022. 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 and well-known investment fund manager and asset management company. It was formerly named and traded as Fidelity International Limited, but on February 1, 2008, changed its name to FIL Limited. The Complainant, either itself or through its subsidiaries, offers a full range of financial investment and asset management services throughout the world to private and corporate investors, including cash and equity ISA options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services for clients with larger investment portfolios, retirement savings, investment trusts, and share dealing. Since the Complainant was founded over 50 years ago, all of these services have been offered globally under the brand name FIDELITY and marks including FIDELITY.
The Complainant owns inter alia the following trademark registrations for a wide range of financial services and related services:
European Union Trademark No. 3844925 for FIDELITY, registered on September 21, 2005, in International Classes 16 and 36;
European Union Trademark No. 3844727 for FIDELITY INVESTMENTS, registered on September 1, 2005, in International Classes 16 and 36;
European Union Trademark No. 4579009 for FIDELITY INTERNATIONAL, registered on July 7, 2006, in International Classes 16, 35 and 36;
European Union Trademark No. 14937361 for F FIDELITY INTERNATIONAL (figurative), registered on August 24, 2016, in International Classes 35, 36, 38, 41, and 42;
European Union Trademark No. 14939854 for F FIDELITY INTERNATIONAL (figurative), registered on August 24, 2016, in International Classes 35, 36, 38, 41, and 42;
European Union Trademark No. 14632021 for FIDELITY, registered on May 21, 2020, in International Classes 35 and 36;
European Union Trademark No. 14632012 for FIDELITY INVESTMENTS, registered on May 21, 2020, in International Classes 35 and 36;
United Kingdom Trademark No. 903844925 for FIDELITY, registered on September 21, 2005, in International Classes 16 and 36;
United Kingdom Trademark No. 914632021 for FIDELITY, registered on May 21, 2020, in International Classes 35 and 36;
United Kingdom Trademark No. 914632012 for FIDELITY INVESTMENTS, registered on May 21, 2020, in International Classes 35 and 36; and
United Kingdom Trademark No. 914770598 for FIDELITY INTERNATIONAL, registered on March 22, 2016, in International Classes 35 and 36.
In addition, the Complainant, its subsidiaries and related companies are the registrant of various domain names containing the above trademarks amongst which:
The disputed domain name was registered on October 22, 2020, well after the Complainant secured rights to the trademarks. The disputed domain name is not currently used. The Panel tried to visit the disputed domain name on February 4, 2022, and the disputed domain name currently resolves to a parking page hosted by the Registrar.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are present. The three elements being: (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.
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the disputed domain name is confusingly similar to its abovementioned trademarks. It claims that the only distinctive element within the disputed domain name is the word “fidelity”, which is clearly recognizable as the first element within the disputed domain name and which is identical to the Complainant’s FIDELITY trademarks or to the main distinctive element of the other trademarks listed above. Furthermore, the Complainant points out that the additional element in the disputed domain name, namely “uk” merely indicates that the Respondent is based in or provides services in the United Kingdom. This additional element therefore does not serve to distinguish the disputed domain name from the Complainant’s trademarks. Rather, if anything, the Complainant claims, it reinforces the impression that there is a connection between the disputed domain name and the Complainant, since the UK is a key jurisdiction for the Complainant and it is well known there. Finally, the Complainant states that the domain name suffix “.com” is nondistinctive and its presence does nothing to diminish the confusing similarity of the disputed domain name and the Complainant’s trademarks.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant points to the fact that the disputed domain name does not currently resolve to an active website and therefore cannot be linked to any bona fide offering of goods or services. In addition, the Complainant confirms that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. Accordingly, the Complainant claims, the Respondent is unable to reasonably claim actual or contemplated bona fide or legitimate use of the disputed domain name. In addition, the Complainant contends that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain dame without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademarks.
The Complainant points to the fact that the disputed domain name and the email address “[…]@fidelityuk.com” are being used in connection with a fraud or phishing activity in which respect the UK’s Financial Conduct Authority (FCA) issued a warning on October 23, 2020 (the Complaint states “2010” but the Panel believes this should read “2020” as this is what is stated on the listing submitted as annex 12 to the Complaint). The listing also states that the entity using the disputed domain name and the abovementioned email address (a) is not authorized by the FCA; (b) is targeting people in the UK; (c) has no association whatsoever with the UK registered company FIL (UK) Limited; (d) that scammers are falsely claiming that it is linked to the UK registered company; and (e) that it has cloned the Complainant’s genuine fund, Fidelity Investment Funds V. Referring to Diamond Hill Investment Group, Inc. v. Richard Stroud,WIPO Case No. D2016-0510, the Complainant concludes that the use of the disputed domain name in connection with phishing or other fraudulent activities is prima facie not bona fide commercial use. Nor is it a legitimate noncommercial or fair use, the Complainant emphasizes, since it is apparent that the Respondent intends to profit financially from misleading Internet users through use of the disputed domain name.
Finally, the Complainant states that the contact details provided by the Respondent to the Registrar appear to be false. The address provided by the Respondent appears to be occupied by a restaurant named “Cartofisserie”. This shows, according to the Complainant, that there is no entity named Fidelity UK operating out of this address.
(iii) the disputed domain name has been registered and is being used in bad faith
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. Regarding the registration in bad faith, the Complainant claims that it and its trademarks are widely known internationally, including in the United Kingdom, and that the Complainant’s services provided under its trademarks are widely publicized. According to the Complainant, the Respondent was clearly aware of the Complainant and the Complainant’s trademarks when it registered the disputed domain name. Indeed that knowledge, and a desire to profit fraudulently from association with the Complainant, appears to have been what prompted the registration, the Complainant concludes. In support of that the Complainant points to the FCA warning and register listing mentioned above.
According to the Complainant, the Respondent also uses the disputed domain name in bad faith. The Complainant points again to the FCA warning and register listing mentioned above to demonstrate an intention on the Respondent’s part to register and use the disputed domain name with the intent to divert Internet users looking for FIL (UK) Limited and FIL Investment Services (UK) Limited by creating a likelihood of confusion with these companies for the Respondent’s commercial gain. Using a domain name in connection with a fraud or phishing activity has been held by previous decisions to be an indicator of bad faith, the Complainant claims, while invoking Virgin Enterprises Limited v. Remi Ibrahim,WIPO Case No. D2018-2131, and Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Joshua Kimac,WIPO Case No. D2018-1641, and recent decisions involving the Complainant, FIL Limited v Domain Admin, Whois Privacy Corp.,WIPO Case No. D2019-1093, and FIL Limited v Domain Admin, Privacy Protect, LLC / John Hope, Hope Ltd.,WIPO Case No. D2019-1340.
Finally, the Complainant points to fact that the Respondent has provided false contact details to the Registrar as a further indicator of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Panel finds that it has jurisdiction to hear this dispute as the Policy has been incorporated by reference into the registration agreement between the Registrar and the Respondent.
The Panel notes that while the Respondent has been duly notified, he did not reply to the Complainant’s contentions within the time period established by the Rules. Pursuant to paragraph 14 of the Rules the Panel shall nonetheless proceed to a decision on the Complainant’s complaint and it may draw such inferences from the Respondent’s failure to respond as it considers appropriate.
Paragraph 4(a) of the Policy requires that in order for its complaint to succeed, the Complainant must prove that the following three elements are present:
(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.
The above three elements will each be discussed in further detail below.
A. Identical or Confusingly SimilarThe Complainant is required to establish: (1) that it owns rights in a trademark or service mark, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademarks.
Firstly, the Panel finds that the Complainant has clearly evidenced that it owns registered trademark rights to FIDELITY, FIDELITY INVESTMENTS, and FIDELITY INTERNATIONAL. The Panel is satisfied with the evidence provided in support of the existence of trademarks for or containing the word “Fidelity”. It should be noted that paragraph 4(a)(i) of the Policy does not set minimum requirements as to the jurisdictions of the trademarks a complainant relies on, nor as to the number, nature or scope of protection of such trademarks.
Secondly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks since the disputed domain name contains the trademarked word “fidelity”. The Panel agrees with the Complainant that the other word “uk” will likely be perceived as referring to the country United Kingdom. In addition, the words “fidelity” and “uk” have been separated by a hyphen. In any event, as the trademark FIDELITY is recognizable within the disputed domain name, the additions of the hyphen and “uk” do not prevent the Panel’s finding of confusing similarity under the first element. It is a well-established view of UDRP panels, with which the Panel agrees, that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see for instance: Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts,WIPO Case No. D2015-1384; BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284).
Finally, as for the applicable Top-Level Domain, i.e. the suffix “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test (CANAL + FRANCE v. Franck Letourneau,WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate a right or legitimate interest:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is a well-established view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant is generally sufficient to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that a respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
The Panel notes that the Respondent has not responded to any of the Complainant’s contentions, let alone submitted evidence to the contrary, and that, pursuant to paragraph 14 of the Rules, the Panel may draw such inferences from the Respondent’s failure to respond as it considers appropriate. In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors.
The Panel agrees that there is no evidence that the Respondent is using the disputed domain name for a bona fide offering of goods or services, the fact that the disputed domain name does not currently resolve to an active website indeed supports this. Moreover, the fact that the disputed domain name has been used in the past in connection with a fraud or phishing activity serves as further proof of this. The Panel agrees with the Complainant that fraud or phishing activity is prima facie not bona fide commercial use nor is it legitimate noncommercial or fair use. This is a well-established view of UDRP panels, with which the Panel agrees, confirmed in decisions like Diamond Hill Investment Group, Inc. v. Richard Stroud,WIPO Case No. supra, referred to by the Complainant.
In addition, there is no evidence that the Respondent is sponsored by or affiliated with the Complainant in any way or that the Complainant has licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. The Panel has taken note of the Complainant’s confirmation in this regard and has not seen any evidence that would suggest the contrary.
Finally, there is no evidence that the Respondent has been commonly known by the disputed domain name. The Complainant has convincingly demonstrated that the address provided by the Respondent to the Registrar appears to be occupied by a restaurant named “Cartofisserie” and there does not seem to be an entity named Fidelity UK operating out of this address.
The Complainant states that the contact details provided by the Respondent to the Registrar appear to be false. The address provided by the Respondent appears to be occupied by a restaurant named “Cartofisserie”. This shows, according to the Complainant, that there is no entity named Fidelity UK operating out of this address.
For all the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy non-exhaustively lists four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the circumstances and evidence presented by the Complainant offer sufficient proof that both the Respondent’s registration and current use of the disputed domain name are in bad faith.
The Panel will first discuss the Respondent’s registration of the disputed domain name. The Panel believes that the Respondent knew or, at least, should have known at the time of registration that the disputed domain name included the Complainant’s abovementioned trademarks. The Panel is convinced by the evidence presented that the Complainant and its abovementioned trademarks are widely known internationally, including in the United Kingdom, and that the Complainant’s services provided under the abovementioned trademarks are widely publicized. The Respondent’s knowledge of the Complainant’s abovementioned trademarks may already be inferred from these circumstances (SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092, and American Funds Distributors, Inc. v. Domain Administration Limited,WIPO Case No. D2007-0950). Moreover, the Panel agrees with the Complainant that the subsequent use of the disputed domain name in connection with a fraud or phishing activity serves as further evidence that the Respondent knew about the Complainant’s abovementioned trademarks at the time of registration and that the Respondent registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with those trademarks (Paragraph 4(b)(iv) of the Policy).
Regarding the use of the disputed domain name, the Complainant points to the abovementioned fraud or phishing activity and the fact that the Respondent has provided false contact details to the Registrar to support its claim of bad faith use. The Panel agrees with the Complainant, and prior UDRP panels in the cases the Complainant referred to, that using a domain name in connection with a fraud or phishing activity is an indicator of bad faith use. The Panel finds that the Respondent has also used the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s abovementioned trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (Paragraph 4(b)(iv) of the Policy). The fact that the disputed domain name no longer resolves to an active website and therefore the use of the disputed domain name in the abovementioned fraud or phishing activity may now have stopped, does not prevent this finding. It is a well-established view of UDRP panels, including in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. The Panel agrees with this view and finds that the circumstance of past bad faith use by the Respondent makes it implausible that the disputed domain name will be put to any good faith use in the future. The Panel agrees with the Complainant that there is also no evidence of any actual or intended use of the disputed domain name in good faith. Finally, the fact that, as shown by the Complainant, the Respondent seems to have provided false contact details only further supports a finding of bad faith use.
In light of the above, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith.
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
Benoit Van Asbroeck
Sole Panelist
Date: February 8, 2022