WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. “Fidelity International Group”, Agus Salim
Case No. DCO2012-0012
1. The Parties
The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells International LLP, United Kingdom.
The Respondent is “Fidelity International Group”, Agus Salim of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <fidelitytrust.co> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the disputed domain name. On May 10, 2012 Network Solutions, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) is applicable to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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, and the proceedings commenced on May 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2012.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 19, 2012. 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 disputed domain name was registered on February 11, 2011.
The Complainant is a leading financial services company operating world-wide employing 5,500 people across 25 countries. It currently has assets of USD 212 Billion currently under management. It has been the recipient of many financial sector awards.
The Complainant by itself or its predecessors has continuously used the word “fidelity” in connection with financial services since 1930 and has used that trademark in connection with the online delivery of financial services since 1996. It has several registrations of trademarks consisting of, or including the word FIDELITY in many countries throughout the world, dating from as early as May 1996. It owns registrations of domain names consisting of the word FIDELITY in several country code domains and registrations comprising the word “fidelity” with the addition of a descriptive term in the “.com”, “.biz” and “.ch” domains.
The disputed domain name resolves to an active website at which the Respondent purports to offer services in banking, finance and investment, including trustee services. It claims to be one of the leading financial companies in the world and a global financial service provider.
5. Parties’ Contentions
The Complainant claims to have a substantial world-wide reputation and goodwill resulting in its FIDELITY brands being particularly well-known within the financial services market. It contends that:
- the disputed domain name is confusingly similar to its FIDELITY trademark. It submits that in assessing whether or not the disputed domain name is identical or confusingly similar to its FIDELITY trademark the TLD suffix should be ignored and the addition of the descriptive word “trust” only adds to the likelihood of confusion. It cites in support of these propositions The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491 and Aventis Pharma SA v. Valicenti, WIPO Case No. D2005-0037.
- the Respondent is not associated or connected with the Complainant in any way, and has not been authorized or otherwise permitted to use the Complainant’s trademarks;
- the Respondent's use of the disputed domain name to direct to a website offering services substantially similar to those in respect of which the Complainant has established a substantial reputation and goodwill does not constitute a use in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy;
- its FIDELITY trademark is a world-wide well-known brand under which it has traded for over 80 years. It is not credible that any person within the financial services sector could have failed to know of the Complainant and its trademark. Further, even elementary Internet searches would have revealed the pre-existence of the Complainant and its long established rights;
- the disputed domain name in the .co domain is identical with the .com domain name <fidelitytrust.com> owned and by the Complainant's North American affiliate;
- the Respondent has been incorporated only since October 2011 and the Complainant is unaware of any circumstances to indicate that the Respondent can claim to be commonly known by the disputed domain name;
- the Respondent cannot claim to be making legitimate non-commercial or fair use of the disputed domain name;
- the Respondent's use of the disputed domain name to direct to its website offering services which are directly competitive with those of the Complainant evidences an intentional attempt on the part of the Respondent to attract for commercial gain Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website or the services offered at that site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated long-standing registered and common law trademark rights in the word FIDELITY. The disputed domain name comprises that word with the addition of the word “trust” which is descriptive of the nature of services offered by the Complainant, and by the Respondent in competition with the Complainant. The addition of that word to the disputed domain name serves only to increase the likelihood of confusion between the disputed domain name and the Complainant's trademark. The content of the website at the disputed domain name “does nothing to dispel and serves only to reinforce the connection in the public mind between the …. [trademark]…. and the Complainants, and therefore increases the risk of confusion between the mark and the domain” see Aventis Pharma SA v. Valicenti, WIPO Case No. D2005-0037.
The Panel therefore finds that the disputed domain name is identical or confusingly similar with a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has shown that it is, and has been for many years, well and widely known in the financial services industry. The Respondent’s website at the disputed domain name appears to offer services in the same industry as the Complainant. In view of that, as the Complainant contends, it is not credible that the Respondent did not know of the Complainant and its reputation in its FIDELITY trademark when it registered the disputed domain name. In the face of that knowledge its adoption and use of the disputed domain name in the offering of services directly competitive with the Complainant cannot be considered a bona fide offering of goods or services. On the contrary, the evidence indicates that the Respondent’s adoption of the disputed domain name was done in bad faith and accordingly there is no basis upon which the Respondent could claim rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy (see for example, Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847). There is no other apparent basis upon which the Respondent could establish such a claim. Its use of the disputed domain name is manifestly commercial and there is no evidence that it is commonly known by the name “Fidelity Trust”. The Respondent has not sought to dispute the Complainant's evidence and submissions.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As discussed in paragraph B above, the Respondent’s adoption of the disputed domain name in the light of the Complainant’s substantial rights and reputation in the name and trademark FIDELITY and its subsequent use of that domain name to apparently offer services in direct competition with the Complainant are powerful indicators that the Respondent registered and is using the disputed domain name intentionally in an attempt to attract, for commercial gain, Internet users to its website by creating the likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the services offered at its website.
A further indicator of Respondent’s bad faith is the fact that it chose to register the disputed domain name in the .co domain (Colombia) which is a domain foreign to the domicile of the Respondent and any of the locations from which is purports to operate. Further, the Panel finds that the Respondent’s registration of the disputed domain name, which is almost identical with the Complainant’s affiliates domain name <fidelitytrust.com> is further evidence of registration and use in bad faith.
The Respondent was formed only in late 2011. That fact, and a visit to the website at the disputed domain name, strongly suggests that the Respondent’s claim at that website, to be one of the leading financial companies in the world and a global financial service provider, strains belief. It suggests a deliberate attempt to associate the Respondent with the Complainant and mislead consumers.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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 <fidelitytrust.co> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: July 3, 2012