Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondents are Fid Hk of Accra, Ghana, and Michael Dwen, Fast Serv Inc. d.b.a. QHoster.com of Belize, Belize.
The disputed domain names <onlinefidelityhk.com> and <onlinefidelityhk.net> are registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details. On November 29, 2017, Complainant filed an amended Complaint.
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 Respondents of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 26, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 9, 2018. 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.
Complainant is the parent company of numerous subsidiaries providing financial services globally. Complainant and its subsidiaries provide financial services in 25 countries, managing USD 290 billion in assets, and employing about 7,000 employees. Complainant is one of the largest providers of investment strategies worldwide, and it has provided financial services under the mark FIDELITY since 1969 and owns numerous registrations for these marks, including Hong Kong, China Registration No. 1997B09886 (registered October 9, 1997) for FIDELITY; Hong Kong, China Registration No. 300481419 (registered February 8, 2006) for FIDELITY INTERNATIONAL; European Union Registration No. 003844925 (registered September 21, 2005) for FIDELITY; European Union Registration No. 004579009 (registered July 7, 2006) for FIDELITY INTERNATIONAL; and United States of America Registration No. 4468520 (registered January 21, 2014) for F and design.
Complainant owns the registration for the domain names <fidelityinternational.com> and <fidelity.com.hk>. Complainant has set up websites associated with these URLs. Complainant uses the domain names and associated websites to inform customers about its FIDELITY mark and its financial services and products.
The disputed domain names <onlinefidelityhk.com> and <onlinefidelityhk.net> were registered on April 21, 2017. Respondents have no affiliation with Complainant. Prior to the time the Complaint was filed, Respondents were using the URLs associated with the disputed domain names to resolve to websites that mimicked the official financial services website of Complainant, and included asking consumers for their username and password. The websites were later made inactive. Complainant has not authorized any activities by Respondents, nor any use of its trademarks thereby.
Complainant contends that (i) disputed domain names <onlinefidelityhk.com> and <onlinefidelityhk.net> are identical or confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the disputed domain names; and (iii) Respondents registered and are using the disputed domain names in bad faith.
In particular, Complainant contends that it has a well-known mark, and that it has won numerous awards globally for its financial services. Complainant further contends that it has registrations for FIDELITY as well as various iterations of FIDELITY, that it uses online, including in Hong Kong, China which has the country code “HK”. Complainant contends that Respondents, working together or under an alias, have merely used the disputed domain name to set up websites meant to lure in customers looking for Complainant and its services, in an “intentional passing off.” Complainant further contends that Respondents have no rights or legitimate interests in the registrations or use of the disputed domain names. Rather, Complainant contends that Respondents have acted in bad faith in setting up the websites, when Respondents clearly knew of Complainant’s rights.
Respondents did not file a reply to Complainant’s contentions in this proceeding.
As a preliminary matter, the Panel notes that there are three named Respondents in this case, including a company with a “d.b.a.,” all as listed in the “WhoIs” information originally provided by the Registrar. Paragraph 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. Situations may occasionally arise in which multiple respondents may be considered as one domain name holder for the purpose of this provision. Such a situation arises here.
In this case, both of the disputed domain names, until their content was taken down, resolved to URLs displaying identical content. They also were created on the same date. The Panel is thus satisfied that all of the captioned entities are properly included as Respondents in this case.
This Panel must first determine whether the disputed domain names <onlinefidelityhk.com> and <onlinefidelityhk.net> are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The disputed domain names directly incorporate Complainant’s registered trademark FIDELITY, and merely adds the descriptive terms “online” and “hk”.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with other terms (whether dictionary terms, generic or descriptive words, etc.) does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter-IKEA v. Polanski,WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring <cbsone.com>).
The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondents did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondents have in the past used the disputed domain names to divert Internet users to websites that mimic Complainant’s website but which are unaffiliated with Complainant or Complainant’s services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interest in the disputed domain names, which Respondents have not rebutted.
The Panel therefore finds that Complainant has provided sufficient evidence of Respondents’ lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondents have not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondents have previously set up URLs associated with the disputed domain names to resolve to websites that mimicked the official financial services website of Complainant, and included asking consumers for their username and password. Hence, Respondents are trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondents’ own commercial gain.
The disputed domain names also use terms “online” and “hk” which are also used descriptively by Complainant in its own domain name addresses or website content. The Panel thus finds that the added terms would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s online operations in or about Hong Kong, China.
Given the nature of the site content and the disputed domain names which incorporate Complainant’s mark, as well as the global nature of Complainant’s FIDELITY mark, the Panel finds strong evidence that Respondents registered and used the disputed domain names with knowledge of Complainant’s prior rights, thereby evidencing bad faith.
Therefore, the Panel finds that Respondents registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <onlinefidelityhk.com> and <onlinefidelityhk.net> be transferred to Complainant.
Dated: January 19, 2018
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