WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fidelity International Limited v. Fidelity&Co

Case No. D2019-0131

1. The Parties

The Complainant is Fidelity International Limited of Hamilton, Bermuda, represented by Maucher Jenkins, United Kingdom.

The Respondent is Fidelity&Co of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <fidelitynco.com> is registered with Whois Networks Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 29, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On February 1, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

The Center verified that the 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 Korean of the Complaint, and the proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 7, 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 following factual information is derived from the Complaint and supporting materials submitted by the Complainant:

The Complainant is one of the largest investment fund managers in the world. It was formerly named Fidelity International Limited (also known as February 1, 2008 FIL Limited). The Complainant, either itself or through its subsidiaries, offers a full range of financial investment 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 40 years ago, all of these services have been offered under the brand name “Fidelity” and marks including FIDELITY (the “FIDELITY Marks”). The Complainant offers its services under the FIDELITY Marks worldwide, including in the Republic of Korea, where it is believed the Respondent is based.

Through their substantial business and investment in the promotion of FIDELITY and marks incorporating FIDELITY, the Complainant and its subsidiaries and related companies have acquired a very considerable reputation and goodwill in FIDELITY and FIDELITY-composite marks in relation to financial services internationally, including in the Republic of Korea. In the Republic of Korea, the FIDELITY Marks have been used since long prior to the registration of the disputed domain name in respect of investment and financial services. Fidelity Asset Management Co., Ltd., a Korean subsidiary of the Complainant provides over 50 funds established in the Republic of Korea and also offers over 80 diversified offshore Fidelity funds to domestic investors. In addition, the Complainant has operated a website targeting Korean investors at “www.fidelity.co.kr” since at least as early as August 16, 1999. These include Wayback images of the Complainant’s Korean website showing use of the FIDELITY Marks prior to the date of the disputed domain name was registered.

The disputed domain name <fidelitynco.com> was registered on October 31, 2018, and resolved to a website for an investment advisory service group, which provides information regarding capital structures and risk management.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the FIDELITY trademark; ii) there is no evidence of 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; iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Fidelity”.

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent 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 its website or location. The Complainant further argues that the Respondent’s logo mark nearly identical to that of the Complainant is a clear evidence of the Respondent’s desire to profit from association with the Complainant.

Lastly, the Complainant contends that the Respondent’s provision of false fact information is a further indication of bad faith. Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Kurtsan Ilalari A.S. v. Ismail Ahmet Tokcan/Nedim Ayaz, WIPO Case No. D2006-0168.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides, “[u]nless 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.” According to information we have received from the concerned registrar, the language of the registration agreement for the disputed domain name is Korean.

However, notwithstanding the actual language of the registration agreement, the Complainant requested that English be the language of the proceeding. Accordingly, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or 3) submit a request for English to be the language of the administrative proceedings, which includes arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Complainant submitted a request for English to be the language of the administrative proceedings.

The Panel notes that there are indications as to the Respondent’s ability to understand and communicate in English. First, the disputed domain name is comprised of the English word “fidelity” and “nco”, which is an abbreviation of “and corporation”. Moreover, the language of the website linked to the disputed domain name is English. While the Respondent seems to be able to understand and communicate in English, the Complainant has no understanding of Korean. Requiring the Complainant to translate the Complaint into Korean would not only be unduly burdensome, but also delay the proceedings.

In these circumstances the Panel finds that English will be the language of the proceeding.

B. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s trademark FIDELITY in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (“when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy”). Moreover, the generic Top-Level Domain, such as “.com”, is normally disregarded during the first element confusing similarity test. See section 1.11 of WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the disputed domain name, “nco”, which is an abbreviation of “and corporation”, is attached to the Complainant’s trademark FIDELITY. However, given that the term “nco” is merely descriptive, it does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. See section 1.8 of WIPO Overview 3.0; see also, JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486 (“the mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names”). Moreover, it is highly likely that the Internet user will clearly recognize the FIDELITY marks and come to the conclusion that the Respondent’s website is connected with the Complainant.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Section 2.1 of WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademark to the Respondent. The Complainant has not authorized or permitted the Respondent to use its FIDELITY Marks. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, which wholly incorporates the Complainant’s mark. F. Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.

The Panel agrees that there is no evidence of 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 within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence, which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Fidelity”.

By failing to respond to the Complainant’s position, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.

In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that when the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Respondent is not only using the FIDELITY trademark in the disputed domain name, but also presenting a logo nearly identical to that of the Complainant on the top of its website, suggesting that the website under the disputed domain name belongs to the Complainant or is an officially affiliated to the Complainant. Given the similarity in types of services the Complainant and the Respondent provide, it is highly likely that the Respondent intended to misrepresent the affiliation, taking advantage of the Complainant’s good will and reputation in the industry.

Lastly, while not an express ground of bad faith under paragraph 4(b) of the Policy, it is established that the provision of false contact information is an indication of bad faith. See Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, supra; Wachovia Corporation v. Peter Carrington, supra; Kurtsan Ilalari A.S. v. Ismail Ahmet Tokcan/Nedim Ayaz, supra. In this case, the Respondent provided not only a false address, but also an email address, which does not seem to be maintained by the Respondent. These are further indications of bad faith.

Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

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 <fidelitynco.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: March 16, 2019