WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Scotte Coutow

Case No. D2018-2369

1. The Parties

Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Bermuda”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Scotte Coutow of London, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <waytofidelity.com> (“the Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 14, 2018.

The Center appointed Isabel Davies as the sole panelist in this matter on November 20, 2018. 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’s business of financial services was established in 1969, trading as Fidelity International Ltd. It was the international investment arm of Fidelity Investments founded in Boston, Massachusetts, United States of America but was spun off and became independent.

On February 1, 2008 Complainant changed its name to FIL Ltd.

Complainant is the owner of registered trademarks for FIDELITY, other marks including FIDELITY and the Fidelity logo in the UK, European Union and the United States of America dating from as early as 1996 (for example, UK trademark no. UK00002100049 FIDELITY, registered on December 6, 1996).

Complainant has registered the domain names <fidelityinternational.com> registered on May 31, 2001 and <fidelity.co.uk> registered before August 1996.

Respondent registered the Disputed Domain Name on September 9, 2016.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

Complainant states that it is the parent company of numerous subsidiaries in the financial services field in countries around the world and is the owner of trademark registrations across various jurisdictions “Complainant’s trademarks.” These demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

Complainant states that it is the parent company of numerous subsidiaries in the financial services field in countries around the world.

Complainant states that it has, itself or through its predecessors, subsidiaries or related companies, been providing financial services under the FIDELITY trademark and marks incorporating FIDELITY continuously since 1969.

Complainant states that it serves millions of retail clients and intermediaries such as banks, financial advisers, and insurance companies. Complainant’s more than 450 institutional clients include pension funds, life insurers, endowment funds, family offices and sovereign wealth funds. It states that, as of September 30, 2016 it was responsible for USD 85 billion in assets under administration.

Complainant states that it is well-recognized within the industry and that FIDELITY is a distinctive and well-known mark used by Complainant in connection with asset management goods and services.

It states that it maintains a strong Internet presence through its primary website “www.fidelityinternational.com” and operates a number of local websites in Austria, Australia, Bahamas, Belgium, Bermuda, Cayman Islands, Overseas Territory of the UK, Chile, China, Czech Republic, Denmark, Finland, France, Germany, Hong Kong, China, Hungary, Ireland, Italy, Japan, Republic of Korea, Latin America, Luxembourg, Malta, Middle East, Norway, Netherlands, Poland, Portugal, Singapore, Slovakia, Spain, Sweden, Switzerland, Taiwan, and UK.

It also states that it is also the owner of numerous domain names with Top-Level Domains (“TLDs”) containing the FIDELITY trademark including <fidelity.co.uk>.

Complainant states that when comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademarks.

It states that the Disputed Domain Name incorporates Complainant’s FIDELITY trademark while merely adding the generic terms “way to” to the beginning of the trademark and contends that the mere addition of these generic terms to Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark under Policy paragraph 4(a)(i), and the Disputed Domain Name must be considered confusingly similar to Complainant’s trademark.

It states that it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy paragraph 4(a)(i) and refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“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.”)

Additionally, Complainant contends, Respondent’s use of the Disputed Domain Name contributes to the confusion. Respondent is using the Disputed Domain Name to resolve to a website which makes unauthorized use of Complainant’s marks, which suggests that Respondent intended the Disputed Domain Name to be confusingly similar to Complainant’s trademark as a means of misleading consumers into visiting Respondent’s website in the mistaken belief that it was that of, or in some way related to or authorized by, Complainant.

As a result, Complainant contends, Respondent’s use of the Disputed Domain Name to resolve to a website that features Complainant’s logo and trademark is further evidence that the Disputed Domain Name is confusingly similar to Complainant’s trademark.

Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)).

Complainant states that it has the exclusive right to use Complainant’s trademarks in commerce on or in connection with the goods and/or services for which Complainant’s trademarks are registered.

Complainant states that Respondent is not commonly known by the Disputed Domain Name and contends that this evinces a lack of rights or legitimate interests referring to Policy, paragraph 4(c)(ii). Furthermore, Complainant states that it has not licensed, authorized, or permitted Respondent to use its trademarks or to register domain names incorporating them.

Complainant states that the pertinent WhoIs information identifies the Registrant as “Scotte Coutow,” which does not resemble the Disputed Domain Name in any manner – and contends that, where no evidence, including the WhoIs record for the Disputed Domain Name, suggests that Respondent is commonly known by the Disputed Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of Policy paragraph 4(c)(ii).

Complainant contends that, in creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by requesting them to register new accounts or log in to existing accounts. Thus, the website to which Respondent’s Disputed Domain Name resolves seeks to take advantage of the fame of Complainant’s trademarks and the trust and goodwill that Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to Respondent’s website for personal gain, and at worst, “phish” personal information from Complainant’s customers (in the event that Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). Complainant submits that this use of the Disputed Domain Name, presumably for commercial gain, and with devious motives, fails to constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate, noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).

Further, Complainant contends, the Disputed Domain Name redirects internet users to a website that copies and attempts to duplicate Complainant’s official website by copying its design and layout as well as featuring marketing materials belonging to Complainant, i.e. marketing video clip and company history. As such, the Disputed Domain Name’s website has purposely been designed to serve as a replica of Complainant’s website, all as a means of deceiving internet users into believing that the Disputed Domain Name and its website are associated with Complainant. Respondent’s attempt to pass off the Disputed Domain Name as being affiliated with Complainant, and in fact as being Complainant, is in itself evidence of the fact that Respondent does not have rights and legitimate interests in the Disputed Domain Name pursuant to Policy paragraph 4(a)(ii).

Further still, Complainant contends, Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name. Respondent’s inclusion of Complainant’s logo and trademarks on the Disputed Domain Name’s website is a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand, and Respondent is not only using the confusingly similar Disputed Domain Name but is also imitating Complainant by displaying Complainant’s logo and trademarks. This imitation amounts to Respondent passing itself off as Complainant, and “Respondent, in [also] using [a] confusingly similar domain name to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii).”

Complainant states that Respondent registered the Disputed Domain Name on June 25, 2017, which is significantly later than Complainant filed for registration of its FIDELITY trademarks with the United States Patent and Trademark Office (“USPTO”), European Union Intellectual Property Office (“EUIPO”), Intellectual Property Office of the United Kingdom (“UKIPO”) and Trademark Office of The State Administration for Industry and Commerce (“SAIC”), significantly later than Complainant’s first use in commerce of its trademark in 1969 and significantly later than Complainant’s registration of its <fidelity.co.uk> domain name before August 1996.

The Disputed Domain Name was Registered and is Being Used in Bad Faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)) Complainant contends that, by registering a domain name that incorporates the entirety of Complainant’s FIDELITY trademark with the generic terms “way to” added as a prefix, while resolving to a website which attempts to imitate Complainant’s official site, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Complainant states that, in light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered as stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Complainant also contends that the Complainant’s trademarks are so closely linked and associated with Complainant that Respondent’s use of these marks, or any minor variation of them, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” Complainant refers to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Further, Complainant contends, where the Disputed Domain Name contains Complainant’s FIDELITY trademark and resolves to a website that includes Complainant’s logo and trademarks, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” Complainant refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Complainant states that Respondent has registered and used the Disputed Domain Name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. After first creating a strong likelihood of confusion by misappropriating Complainant’s trademarks in the Disputed Domain Name, Respondent attempts to masquerade as Complainant to solicit sensitive, personal or financial information from unsuspecting people. This type of scheme constitutes fraud and amounts to bad faith registration and use of the Disputed Domain Name as stated in WIPO Overview 3.0 at section 3.1.4 (“[U]se of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”).

Complainant also contends that bad faith can also be established by evidence that demonstrates that “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site…, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondent’s] web site or location.” Policy paragraph 4(b)(iv).

Here, Complainant contends, Respondent creates a likelihood of confusion with Complainant and its trademarks by attempting to copy Complainant’s website as well as featuring Complainant’s logo and trademarks on its website, with Respondent then attempting to profit from such confusion by offering similar products and services. As such, Respondent is attempting to cause consumer confusion in an attempt to profit from such confusion. The impression given by the Disputed Domain Name and its website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, and Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the website listed at the Disputed Domain Name for Respondent’s own commercial gain.

Moreover, Complainant contends, Respondent’s use of the Disputed Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy paragraph 4(b)(iii) because Respondent’s Disputed Domain Name is confusingly similar to Complainant’s trademarks and the website at the Disputed Domain Name features products and services similar to Complainant’s offerings.

Complainant avers that, in light of the facts which it has set out, it is clear that in registering and using the Disputed Domain Name Respondent knew of and targeted Complainant’s trademark and Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:

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

(ii) Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;

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

Each of these elements will be addressed below.

Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or confusingly similar

The Panel accepts that Complainant is the parent company of numerous subsidiaries in the financial services field in countries around the world and is the owner of trademark registrations across various jurisdictions which demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

It accepts that Complainant maintains a strong Internet presence through its primary website “www.fidelityinternational.com”, operates a number of local websites in many countries and that it is also the owner of numerous domain names with TLDs containing the FIDELITY trademark including <fidelity.co.uk>.

The Panel accepts that Complainant has, itself or through its predecessors, subsidiaries or related companies, has been providing financial services under Complainant’s trademarks continuously since 1969 serving millions of retail clients and intermediaries such as banks, financial advisers and insurance companies.

The Panel accepts that Complainant is well-recognized within the industry and that FIDELITY is a distinctive and well-known mark used by Complainant in connection with asset management goods and services.

The Panel notes that the Disputed Domain Name incorporates Complainant’s FIDELITY trademark while adding a non-distinctive prefix “way to” which does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark under Policy paragraph 4(a)(i) and finds that the Disputed Domain Name is confusingly similar to Complainant’s trademarks. The Panel refers to WIPO Overview 3.0 at section 1.8 (“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.”)

The Panel accepts that Respondent’s use of the Disputed Domain Name contributes to the confusion as it is using the Disputed Domain Name to resolve to a website which makes unauthorized use of Complainant’s mark, indicating that Respondent intended the Disputed Domain Name to be confusingly similar to Complainant’s trademark as a means of misleading consumers into visiting Respondent’s website in the mistaken belief that it was that of, or in some way related to or authorized by, Complainant.

The Panel refers to The Gaming Board for Great Britain v. Gaming Board, WIPO Case No. D2004-0739 (“the way in which the Respondent has used the domain name <gbgamingboard.org> suggests that the Respondent intended users of the Respondent’s website to believe that the website at the disputed domain name was associated with the Complainant”).

Respondent’s use of the Disputed Domain Name to resolve to a website that features Complainant’s logo and trademark is further evidence supporting the Panel’s finding that the Disputed Domain Name is confusingly similar to Complainant’s trademark.

B. Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name

The Panel accepts that Complainant has the exclusive right to use Complainant’s trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates.

The Panel accepts that Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests and that Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks or to register domain names incorporating them. As the panel stated “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed” in Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

The Panel accepts that, in creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent’s purpose is to cause visitors to divulge their personal information by requesting them to register a new accounts or log in to existing accounts. It also accepts that the website to which Respondent’s Disputed Domain Name resolves seeks to take advantage of the fame of Complainant’s trademarks and the trust and goodwill that Complainant has fostered among consumers to illegitimately increase traffic to Respondent’s website for personal gain, and to “phish” personal information from Complainant’s customers.

The Panel accepts that this use of the Disputed Domain Name, for commercial gain fails to constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). The Panel refers to WIPO Overview 3.0 at section 2.13.1 (“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.”)

The Panel also accepts that the Disputed Domain Name redirects internet users to a website that copies and attempts to duplicate Complainant’s official website by copying its design and layout as well as featuring marketing materials belonging to Complainant. The Panel refers to Daniel C. Marino v. Video Images Productions et al., WIPO Case No. D2000-0598 (where registrant selects a domain name that “gives rise to the impression of an association with the Complainant,” it is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to paragraphs 4(c)(i) and (iii) of the Policy).

The Panel notes that Respondent registered the Disputed Domain Name on September 9, 2016, which is significantly later than Complainant filed for registration of Complainant’s trademarks with the USPTO, EUIPO, UKIPO and SAIC significantly later than Complainant’s first use in commerce of its trademark in 1969 and Complainant’s registration of its <fidelity.co.uk> domain name in August 1996.

The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. The Disputed Domain Name was Registered and is Being Used in Bad Faith

The Panel accepts that Complainant’s trademarks are used and well-known internationally, with trademark registrations across numerous countries and that Complainant has marketed and supplied services using Complainant’s trademarks since 1969, which is well before Respondent’s registration of the Disputed Domain Name on September 9, 2016.

The Panel accepts that by registering a domain name that incorporates the entirety of Complainant’s FIDELITY trademark with the non-distinctive prefix of “way to”, while resolving to a website which attempts to imitate Complainant’s official site, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. The Panel refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

The Panel accepts that Respondent has registered and used the Disputed Domain Name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use by creating a strong likelihood of confusion by misappropriating Complainant’s trademarks in the Disputed Domain Name and masquerading as Complainant to solicit sensitive, personal or financial information from unsuspecting people. The Panel accepts that this amounts to bad faith registration and use of the Disputed Domain Name. The Panel refers to WIPO Overview 3.0 at section 3.1.4 (“[U]se of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”).

The Panel accepts that the impression given by the Disputed Domain Name and its website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not and Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name and Respondent is using the fame of Complainant’s trademarks to improperly increase traffic to the website listed at the Disputed Domain Name for Respondent’s own commercial gain. The Panel refers to World Wrestling Federation Entainmentt, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the domain name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).

The Panel also accepts that Respondent’s use of the Disputed Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy paragraph 4(b)(iii) because Respondent’s Disputed Domain Name is confusingly similar to Complainant’s trademarks and the website at the Disputed Domain Name features products and services similar to Complainant’s offerings. The Panel refers to American Express Marketing & Development Corp. and American Express Travel Related Services, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Amy Saxon, WIPO Case No. D2016-1342 (finding that “by using the confusingly similar Domain Name, Respondent has intentionally attempted to disrupt Complainants’ business and to attract Internet users to her company’s website by creating a likelihood of confusion with Complainants’ well-known BLACK CARD marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This amounts to bad faith use within the broad ambit of the Policy.”)

The Panel therefore finds that, in registering and using the Disputed Domain Name, Respondent knew of and targeted Complainant’s trademark and Respondent has 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 <waytofidelity.com> be transferred to Complainant.

Isabel Davies
Sole Panelist
Date: November 25, 2018