WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Domain Admin, Privacy Protect, LLC / John Hope, Hope Ltd.

Case No. D2019-1340

1. The Parties

The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.

The Respondent is Domain Admin, Privacy Protect, LLC, United States of America (“United States”) / John Hope, Hope Ltd., United States.

2. The Domain Name and Registrar

The disputed domain name <fidelitycryptocompany.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 June 17, 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 June 18, 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 June 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2019.

The Center appointed Emmanuelle Ragot as the sole panelist in this matter on July 12, 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 Complainant is one of the largest and best-known investment fund managers in the world, 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 Marks worldwide and has acquired with its subsidiaries and related companies a very considerable reputation and goodwill in FIDELITY and FIDELITY-composite marks in relation to financial services internationally.

For at least the last 20 years, the Complainant and its subsidiaries, including FIL Investment, have also promoted services provided under the FIDELITY Marks on the Internet website “www.fidelity.co.uk”.

For many years, the Complainant and its subsidiaries and related companies have used numerous FIDELITY-composite domain names to link to websites promoting services provided under the FIDELITY Marks, including:

a) <fidelityinternational.com>, registered on May 31, 2001;
b) <fidelityinternational.co.uk>, registered on March 21, 2005;
c) <fidelityinvestment.com>, registered on January 21, 1998, and <fidelityinvestments.com>, registered on May 16, 2000, both of which link to websites of FMR LLC;
d) <fidelityinvestment.co.uk>, registered on July 14, 2005;
e) <fidelityworldwideinvestment.com>, registered on July 14, 2005, and re-directing to <www.fidelityinternational.com>; and
f) <fidelityinvestments.co.uk>, registered on December 9, 1999, and re-directing to <www.fidelity.co.uk>.

The Complainant is the registered proprietor of inter alia the following trademark registrations and applications for FIDELITY and marks incorporating FIDELITY for a wide range of financial services and related services, all of which pre-date registration of the disputed domain name.

a) European Union registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on May 21, 2004, and registered on September 21, 2005;
b) European Union registration no. 14937395 for F in Square Device in Classes 35, 36, 38, 41, and 42, filed on December 18, 2015;
c) European Union registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on May 21, 2004;
d) European Union registration no. 12691432 for FIDELITY WORLDWIDE INVESTMENT in Classes 35, 36, and 42, filed on March 13, 2014;
e) European Union registration no. 14770598 for FIDELITY INTERNATIONAL in Classes 35 and 36, filed on November 5, 2015;
f) European Union registration no. 14937361 for F in Square Device and FIDELITY INTERNATIONAL Logo in Classes 35, 36, 38, 41, and 42, filed on December 18, 2015;
g) European Union registration no. 14939854 for F in Square Device and FIDELITY INTERNATIONAL Logo [in colour] in Classes 35, 36, 38, 41, and 42, filed on December 18, 2015;
h) European Union registration no. 10054377 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo in Classes 35, 36, and 42, filed on June 16, 2011;
i) European Union registration no. 10054393 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [in Colour] in Classes 35, 36, and 42, filed on June 16, 2011;
j) European Union registration no. 4579009 for FIDELITY INTERNATIONAL in Classes 16, 35, and 36, filed on August 4, 2005;

The disputed domain name <fidelitycryptocompany.com> was registered on September 5, 2018, and resolves to a website that reproduces the FIDELITY Marks and offers similar services and products as that of the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below:

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name is identical and confusingly similar to the FIDELITY Marks, the Complainant’s trademarks in which the Complainant has rights. The only distinctive element within the disputed domain names is the word “fidelity,” which is clearly recognizable within the disputed domain name. The additional element in the disputed domain name is the descriptive word, “cryptocompany”, which refers to the Complainant’s activities. This additional element therefore does not serve to distinguish the disputed domain name from the Complainant’s FIDELITY Marks. Rather, if anything, it serves to reinforce the idea that there is a connection between the Complainant and the disputed domain name since it obviously is a word that is related to the Complainant’s business.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant insists that the Complainant has not authorized or permitted the Respondent to use its FIDELITY Marks. The Respondent is not commonly known by the disputed domain name, and is not using the disputed domain names or a name corresponding to it in connection with a bona fide offering of goods or services.

Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain and misleadingly diverting consumers or tarnishing the Complainant’s trademarks.

3) the disputed domain name was registered and has been used in bad faith. Taking the reputation of the FIDELITY Marks into account, the Respondent was clearly aware of the Complainant and the Complainant’s FIDELITY Marks when it registered the disputed domain name. The disputed domain name must have been understood as denoting a website of the Complainant or of a business that is in some way affiliated with the Complainant or with its subsidiaries or related companies. The Respondent has been making this unauthorized use of the Complainant’s FIDELITY Marks.

As a consequence, the average Internet consumers encountering the disputed domain name were likely to assume that they were directed to website that was connected to the Complainant. This constitutes fraud and phishing activity with the intent to divert Internet users looking for the Complainant and to deceive them into divulging private information for the Respondent’s commercial gain. In all circumstances, it is clear that the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating the likelihood of confusion with the Complainant’s FIDELITY Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, which appear to have been used as phishing site capitalizing on the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

A. Identical or Confusingly Similar

The Complainant began trading over 40 years ago and has invested substantially in advertising and promoting its services under the various European Union registered FIDELITY Marks. The marks are well known as regularly appeared in print media circulated throughout Europe and internationally.

The Complainant has further asserted that the dominant and distinctive element in the disputed domain name is the registered trademark FIDELITY Marks, and the addition of the term “cryptocompany” is not sufficient to distinguish the disputed domain name from the trademark FIDELITY.

The disputed domain name suffix “.com” is non-distinctive and its presence does nothing to prevent the confusing similarity of the disputed domain name and the Complainant’s FIDELITY Marks. See inter aliaNational Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338, where the mere addition of a descriptive term to a trademark was found not to avoid confusing similarity between the trade mark and a disputed domain name; also, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003- 0709, where the panel held, “[t]he mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” and Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589, where the panel held, “[i]t is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark.”

The addition of a descriptive word to the Complainant’s trademark does not prevent a finding of confusing similarity.

In conclusion, the Panel finds that the Complainant has provided evidence to support a finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

The Respondent did not answer to the Complaint. Consequently, it did not provide any evidence or allege any circumstances to establish that it has rights or legitimate interests in the disputed domain name.

The Complainant has not authorised 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. 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. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s FIDELITY Marks.

The Respondent is making unauthorised use of the Complainant’s FIDEILTY Marks. The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorised, or permitted the Respondent to register domain names incorporating the Complainant’s FIDELITY Marks. In the absence of any license or permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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.

Given the well-known character of the Complainant’s trademarks, the Panel finds that the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain name.

Considering the above circumstances, the disputed domain name is being used to offer similar services under the Complainant’s trademark. Based on the notoriety of the Complainant’s trademark and the Respondent’s use of FIDELITY trademark throughout the website, it is more than likely that the Respondent had the Complainant in mind when it registered the disputed domain name. Furthermore, by using the FIDELITY trademark without consent, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between its website and services and the Complainant’s mark.

The Panel considers that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element of UDRP.

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 <fidelitycryptocompany.com> be transferred to the Complainant.

Emmanuelle Ragot
Sole Panelist
Date: July 27, 2019