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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Yong Bo/Bo Yong

Case No. D2014-1004

1. The Parties

The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("UK"), represented by RGC Jenkins & Co., UK.

The Respondent is Yong Bo/Bo Yong of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <fidelitystockgains.com> (the "Disputed Domain Name") is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 12, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 16, 2014, 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 June 17, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 20, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2014.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 23, 2014. 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 a Bermuda corporation which provides, either by itself or through its subsidiaries and affiliates, financial investment services throughout the world. The Complainant is the owner of numerous registered trademarks for FIDELITY, inter alia:

(1) FIDELITY, UK trademark, Registration No. 2100049 in class 36, registered in 1996.

(2) FIDELITY, Chinese trademark, Registration No. 939820 in class 36, registered in 1997.

According to the information provided by the Registrar, the Respondent is Yong Bo/Bo Yong. The Disputed Domain Name was registered on December 21, 2013.

5. Parties' Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of many FIDELITY trademarks around the world. The distinctive element of the Disputed Domain Name is the word "fidelity", which is identical to the Complainant's FIDELITY trademark, with the only additional elements being the descriptive words "stock gains". The domain name suffix ".com" is non-distinctive and its presence does nothing to diminish the confusing similarity of the Disputed Domain Name and the Complainant's FIDELITY trademarks. Therefore, the Disputed Domain Name is identical or confusingly similar to the FIDELITY trademarks in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent is not commonly known by the Disputed Domain Name, and is not using it 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 misleadingly to divert consumers or to tarnish the Complainant's trademark.

The Respondent re-directs the Disputed Domain Name to a web site related to investment services, the field in which the Complainant trades, and competes with the services that the Complainant provides. The use of the Disputed Domain Name, which is confusingly similar to the Complainant's FIDELITY trademark, in order to link to a web site of a competitor and to profit thereby from the confusion of Internet users, is not bona fide use of the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

There is no plausible explanation for the Respondent's registration of the Disputed Domain Name other than an intention to create a domain name that is inherently likely to lure Internet users looking for a web site relating to the Complainant and its corporate group and to stock market investment-related services provided by, or in some way connected to, the Complainant. By using a domain name that is confusingly similar to the Complainant's FIDELITY trademarks to re-direct to a commercial web site providing stock alerts, it is clear that the Respondent has intentionally set out to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant. Therefore, the Disputed Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Language of Proceeding

Paragraph 11(a) of the Rules provides that "unless 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".

The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states: "in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (see paragraph 4.3 of WIPO Overview 2.0).

The Complainant requests the language of the proceeding to be English. The Respondent did not reply to the request of the Complainant. The Registration Agreement for the Disputed Domain Name is in Chinese. However, given the following factors, the Panel determines that the language of the proceeding shall be English.

1. The web site to which the Disputed Domain Name re-directs is completely in English and contains extensive English content;

2. The web site is designed to attract Internet users from around the world rather than only Chinese users; and

3. The Center's communication to the Respondent used both English and Chinese and gave the Respondent an opportunity to object to the Complainant's request. The Respondent did not reply to the Center.

Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"

The Complainant is the owner of FIDELITY trademarks. The Disputed Domain Name incorporates the FIDELITY trademark in its entirety with the addition of "stockgains" and the suffix ".com". The term "stock gains" is a descriptive and generic term, which cannot distinguish the Disputed Domain Name from the Complainant's FIDELITY trademarks. In the Panel's view, the addition of these particular descriptive and generic terms does not mitigate the likelihood of confusion, and in fact may increase the confusing similarity between the Disputed Domain Name and the Complainant's trademarks. (J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126). The applicable top-level suffix ".com" in the Disputed Domain Name also does not distinguish the Disputed Domain Name from the Complainant's FIDELITY trademarks.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the domain name[.]"

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:

"[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."

The Complainant is the owner of the FIDELITY trademarks. The Complainant has used the trademarks on the Internet through its subsidiaries' and affiliates' web sites, "www.fidelity.co.uk" and "www.fidelity.com", to provide financial services in connection with the FIDELITY trademarks. There is no evidence submitted to the Panel showing that the Complainant has authorized the Respondent to use the FIDELITY trademarks, to register the Disputed Domain Name or any other variations or that the Respondent is connected or affiliated with the Complainant.

According to the WhoIs database, the name of the Respondent, Yong Bo/Bo Yong, has no apparent connection to the FIDELITY trademarks. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of "fidelity". The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any response to the Complaint, nor submit any allegation or evidence establishing that the Disputed Domain Name is used in connection with a bona fide offering of goods or services or for noncommercial or fair use. Therefore, there is no allegation or evidence from the Respondent indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the] domain name has been registered and is being used in bad faith".

Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."

The FIDELITY trademarks have been registered, inter alia, in China, long before the registration of the Disputed Domain Name in 2013. The Complainant has used the trademark on the Internet by itself or through its subsidiaries' and affiliates' web sites "www.fidelity.co.uk" and "www.fidelity.com", to provide financial services in connection with the FIDELITY trademarks. There is no allegation or evidence suggesting that the Respondent selected the "fidelity" string with a generic term as used in the Disputed Domain Name for any reason other than to create a likelihood of confusion with the Complainant's trademarks as to source, sponsorship, affiliation or endorsement. The Panel finds that the Disputed Domain Name has been registered in bad faith.

The Complainant has used the FIDELITY trademarks on the Internet to provide financial services. The Disputed Domain Name re-directs to the web site under "http://screamingotcpicks.com/web/" on which financial services are provided to Internet users. By using the Disputed Domain Name, in which the Complainant's FIDELITY trademarks is the only distinctive element, the Respondent creates a likelihood of confusion with the Complainant's trademarks that the services provided by the Respondent are endorsed by or affiliated with the Complainant. The Respondent also promotes its financial information services and collects Internet users' email addresses, which are also a form of commercial gain, through the web site to which the Disputed Domain Name re-directs. Therefore, the Respondent is using the Disputed Domain Name in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <fidelitystockgains.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: August 4, 2014

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