The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
The disputed domain name <fidelitycryptomining.com> (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2019, 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 May 14, 2019, 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 May 17, 2019.
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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 2, 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.
The Complainant is a large and well-known investment fund manager based in Bermuda, which, either by itself or through its subsidiaries, offers a full range of financial investment services throughout the world to private and corporate investors. Founded over 40 years ago, the Complainant was formerly named and traded as Fidelity International Limited, but on February 1, 2008, the Complainant changed its name to FIL Limited. Throughout its existence, all of the Complainant’s investment services have been offered under the brand name “Fidelity”.
The financial services business carried on in the United States of America (“United States”) by the Complainant’s sister company, FMR LLC (“FMR”), is promoted on the website “www.fidelity.com”, which attracts a significant number of visitors from the United States. Although the Complainant does not offer cryptomining services of the type purportedly offered by the Respondent, one of FMR’s subsidiaries, Fidelity Digital Assets, announced its intention to offer crypto and blockchain services in 2018 and 2019.
The Complainant is the owner of numerous trademarks for FIDELITY, and is also the owner of trademarks and design marks incorporating the mark FIDELITY for a wide range of financial and related services, all of which pre-date the Respondent’s registration of the Disputed Domain Name. The Complainant’s trademarks include, but are not limited to: European Union Registration No. 3844925 for FIDELITY in International Classes 16 and 36, filed on May 21, 2004 and registered on September 21, 2005; European Union Registration No. 3844727 for FIDELITY INVESTMENTS in International Classes 16 and 36, filed on May 21, 2004 and registered on September 1, 2005; European Union Registration No. 12691432 for FIDELITY WORLDWIDE INVESTMENT in International Classes 35, 36 and 42, filed on March 13, 2014 and registered on July 23, 2014; European Union Registration No. 14770598 for FIDELITY INTERNATIONAL in International Classes 35 and 36, filed on November 5, 2015 and registered on March 22, 2016; and European Union Registration No. 4579009 for FIDELITY INTERNATIONAL in International Classes 16, 35 and 36, filed on August 4, 2005 and registered on July 7, 2006 (hereinafter collectively referred to as the “FIDELITY Mark”).
For many years the Complainant, its subsidiaries and related companies have registered and used numerous domain names incorporating the FIDELITY Mark, including <fidelityinternational.com>, <fidelityinternational.co.uk>, <fidelityinvestment.com>, <fidelityinvestments.com>, <fidelityinvestment.co.uk>, <fidelityworldwideinvestment.com>, and <fidelityinvestments.co.uk>. In addition, the Complainant and its subsidiaries have promoted its services on its Internet website “www.fidelity.co.uk”.
The Respondent registered the Disputed Domain Name on December 8, 2018, many years after the Complainant began using the FIDELITY Mark. As of the writing of this Decision, the Disputed Domain Name resolved to a blank landing page, demonstrating that the Disputed Domain Name is currently being used passively.1
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the FIDELITY Mark based on both its longstanding and continuous use to market its business services and its numerous trademark registrations in the United States and in countries worldwide. The Disputed Domain Name <fidelitycryptomining.com> consists of the FIDELITY Mark followed by the descriptive words “crypto” and “mining”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire FIDELITY Mark and thus, the Disputed Domain Name is confusingly similar to the FIDELITY Mark.
Moreover, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its FIDELITY Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
The Respondent is using the Disputed Domain Name for the purpose of perpetrating a phishing scheme on Internet users to misdirect visitors to a website that has fraudulent information and makes the visitors believe that the website is associated with the Complainant, requesting confidential information in order to purchase cryptocurrency. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See WIPO Overview 3.0, section 2.13.1. Thus, the Panel finds that the Respondent is neither making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FIDELITY Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s FIDELITY Mark.
Second, the Respondent is using the Disputed Domain Name <fidelitycryptomining.com> to operate a phishing scheme aimed at defrauding the Complainant and its potential clients. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution … Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4.
The Respondent’s phishing scheme evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s FIDELITY Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Several UDRP panels have found that phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.
Third, at some point after the commencement of this proceeding, the Respondent has taken down its fraudulent website and is currently using the Disputed Domain Name passively. Passive holding does not prevent a finding of bad faith. By using the Disputed Domain Name passively and having no content on its web page, the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).
Finally, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <fidelitycryptomining.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 5, 2019
1 Prior to the commencement of this proceeding, the Respondent used the Disputed Domain Name to perpetuate a fraudulent phishing scheme. The Disputed Domain Name resolved to a website in which the Respondent attempted to obtain information from Internet users by impersonating the Complainant and allegedly selling cryptocurrency. The Complainant submitted screenshots of multiple pages of the Respondent’s website in Annexes to the Complaint to demonstrate the Respondent’s use of the Disputed Domain Name. The Respondent’s website was entitled “Fidel Crypto Mining” rather than “Fidelity Crypto Mining”. The Complainant also submitted screenshots of several other websites offering cryptocurrency mining services, each of which lists their address as the identical address as the Respondent, include identical reviews, and have the same look and feel as the Respondent’s website. This evidence supports the conclusion that these sites, together with the Respondent’s website, are being used in connection with a fraudulent phishing scheme.
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