WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Domain Admin, WhoIs IDCPrivacy Service / Leonard Kitimbo

Case No. D2019-1374

1. The Parties

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

Respondent is Domain Admin, WhoIs IDCPrivacy Service, United Kingdom / Leonard Kitimbo, Uganda.

2. The Domain Name and Registrar

The disputed domain name <fidelcryptomining.com> is registered with NetEarth One Inc. d/b/a NetEarth (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 18, 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 Complainant on June 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 18, 2019. The Center received an email communication from Respondent on June 19, 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 Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. Respondent sent additional email communications to the Center on June 25 and 27, 2019, and July 16 and 17, 2019.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 17, 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

Complainant Fidelity Limited, or FIL Limited (“FIL Limited” or “Complainant”) offers a full range of financial investment services to private and corporate investors around the world through its main company and subsidiaries. Complainant’s subsidiaries and sister companies offer cryptocurrency trading for institutional customers through a new cryptocurrency firm. Complainant conducts trade under the name FIL INVESTMENT and promotes services under FIDELITY trademarks. Complainant owns valid and subsisting registrations for the FIDELITY trademark (“FIDELITY Marks”), including but not limited to European Union Registration Number 3844925 (registered on September 1, 2005). Complainant owns and operates its primary website in connection with its international business at the domain names <fidelity.com> and <fidelity.co.uk>.

Respondent registered the disputed domain name, <fidelcryptomining.com>, on May 9, 2019. At the time of Complainant’s filing, the disputed domain name did not resolve.

5. Parties’ Contentions

A. Complainant

Complainant contends the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant asserts it is the largest and best-known investment fund managers in the world and offers services under the FIDELITY brand worldwide through its subsidiaries and related companies. Complainant further asserts it has invested substantially in advertising and promoting its services under the FIDELITY Marks, advertised in Europe and internationally, in print and online. Complainant asserts use of the FIDELITY domain names to promote services under the FIDELITY Marks. Complainant contends a sister company, FMR LLC, offers cryptocurrency trading for institutional customers and has invested in a new crypto firm, Fireblocks. Complainant contends the FIDELITY Marks in the European Union were first registered in 2005, and further variations of the FIDELITY trademark were registered from 2005-2015. Complainant asserts the disputed domain name is confusingly similar to the FIDELITY Marks. Complainant asserts the only distinctive element in the disputed domain name is “FIDEL” which is clearly recognizable and similar to the full FIDELITY trademark. Complainant further asserts the addition of “crypto” and “mining” are entirely descriptive in relation to a type of financial service, namely cryptocurrencies, and therefore does not distinguish the disputed domain name from Complainant’s marks. Complainant contends that the average consumer encountering the disputed domain name would assume that it links to a website that is connected to Complainant, and the mere addition of generic or descriptive terms does not avoid confusion between the disputed domain name and Complainant’s trademark. Complainant further contends that disputed domain name is likely to be understood as denoting Complainant or its business.

Complainant asserts Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends Respondent is not authorized or permitted to use its FIDELITY marks. Complainant asserts Respondent is not making noncommercial or fair use of the disputed domain name or using it in connection with bona fide offering of goods or services. Complainant asserts the disputed domain name first made unauthorized use of the FIDELITY trademark on May 29, 2019, and then featured a parked under construction page on June 11, 2019. Furthermore, Complainant asserts the domain name <fidelitycryptomining.com>, recovered in FIL Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093, automatically redirected to the disputed domain name, further indicating Respondent’s lack of bona fide or legitimate use of the disputed domain name. Complainant asserts that there was strong evidence to indicate <fidelitycryptomining.com> was being used in connection with fraud or phishing activity, and that the disputed domain name here is also intended to be used in connection with fraud or phishing activity.

Complainant finally asserts the disputed domain name was registered and is being used in bad faith. Complainant asserts Complainant is well known internationally and its services provided under the FIDELITY Marks are well publicized. Complainant contends the recent use of FIDEL by Respondent through the disputed domain name and the previous use of the FIDELITY trademark in connection with a similar domain name, shows that Respondent would have known Complainant or the FIDELITY Marks before Respondent registered the disputed domain name. Complainant contends Respondent provided false contact information to the Registrar, further indicating bad faith. Complainant asserts the disputed domain name is being used in connection with fraud or phishing, which is an indicator of bad faith. Complainant finally contends Respondent has used the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement by Complainant.

B. Respondent

Respondent submitted several informal responses to the Center stating Respondent purchased the disputed domain name for a client. Respondent further inquired how much Complainant was offering for the disputed domain name to settle the dispute without any indication that Complainant and Respondent entered into any formal settlement agreement.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

(ii) 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.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“[…]Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the FIDELITY Marks. In particular, the first FIDELITY trademark was registered on September 1, 2005, well before Respondent registered the disputed domain name. With Complainant’s rights in the FIDELITY Marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2019-0842.

The disputed domain name encompasses a dominant portion of the FIDELITY Marks, merely omitting the “-ITY” portion.

FIDELITY is used prominently with Complainant’s goods and services distributed in the United Kingdom and globally, and Complainant has provided sufficient evidence demonstrating the extensive advertising, sales, consumer base, and notoriety, showing that the disputed domain name is confusingly similar to the unregistered trademark. While the disputed domain name only reproduces the FIDELITY trademark in part, the trademark is arguably recognizable since “fidel” is the dominant portion of the trademark and, together with the broader case context, supports a finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered FIDELITY trademark. The use in the disputed domain name of the descriptive terms “crypto mining” describes goods or services somehow related to Complainant’s business, which affirms the connection and confusing similarity between the disputed domain name and the Complainant’s trademark rights. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. In addition, the Panel notes Complainant’s claim that, in FIL Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093, the domain name <fidelitycryptomining.com>, which included the trademark FIDELITY in its entirety, was redirecting to the disputed domain name <fidelcryptomining.com>. In the Panel’s opinion, this redirection support the finding that the term “fidel” in the disputed domain name is an abbreviation of the FIDELITY trademark. Therefore, Complainant has established the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the trademark FIDELITY, and showing that the disputed domain name is confusingly similar to this designation.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the FIDELITY Marks or similar designations associated with Complainant. Furthermore, the disputed domain name does not resolve to a substantive website. This type of passive holding does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344. Complainant has made its prima facie case.

Respondent failed to submit any evidence demonstrating rights or legitimate interests in the disputed domain name, and therefore this Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

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

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In the instant proceeding, Complainant submitted ample evidence that the FIDELITY Marks were internationally famous long before the registration of the disputed domain name by Respondent. Respondent has not denied actual knowledge of Complainant’s FIDELITY brand and Respondent was likely aware of the FIDELITY Marks when it registered the disputed domain name, or knew or should have known that the disputed domain name was confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also, TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Furthermore, Complainant previously recovered the domain name <fidelitycryptomining.com> in FIL Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093. That domain name automatically redirected to the disputed domain name in this case, suggesting a relationship between the registration and use of that prior domain name and the disputed domain name in this case, and supporting the notion that Respondent has registered and sought to use both domain names for commercial gain by creating confusion with Complainant’s trademarks. The panel found strong evidence to indicate <fidelitycryptomining.com> was being used in connection with fraud or phishing activity, suggesting the disputed domain name here is also intended to be used in connection with similar fraud or phishing activity. See FIL Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093 (“[…]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.”). Respondent’s use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant as to source, sponsorship, affiliation or endorsement within the meaning of the Policy paragraph 4(b)(iv). See eBay Inc. v. ebayMovin / Izik Apo, WIPO Case No. D2006-1307. In informal communications to the Center, Respondent indicated that it “earns small money from helping out people set up there [sic] servers” and also suggested that Complainant could settle this dispute for some kind of payment, which in this context further suggests that Respondent sought to profit from its registration and use of the disputed domain name by trading on the goodwill associated with Complainant’s trademarks.

Respondent’s submission of inaccurate, incomplete, or falsified contact information to the Registrar, without a street name, postcode, or valid telephone number, further supports a finding of Respondent’s bad faith. See, e.g., Revevol SARL v. Whoisguard Inc. / Australian Online Solutions, Domain Support, WIPO Case No. D2015-0379 (“[…]Other actions of the Respondent in combination with its use of a privacy service, including its failure to respond to the Complaint, its provision of a ‘wrong’ postal address . . . lead the Panel to find that the circumstances of the use of a privacy service in this case are a compounding factor in the finding of registration and use of the disputed domain name in bad faith.”).

The use of a privacy service by Respondent further supports a finding of bad faith.

Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy.

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 <fidelcryptomining.com> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: August 15, 2019