WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Whois Privacy Protection Service, Inc., Whois Agent / Arvixe, LLC, Arvand Sabetian
Case No. D2013-0459
1. The Parties
Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by RGC Jenkins & Co., United Kingdom.
Respondent is Whois Privacy Protection Service, Inc., Whois Agent of Bellevue, Washington, United States of America (“United States”) / Arvixe, LLC, Arvand Sabetian of Calabasas, California, United States.
2. The Domain Names and Registrar
The disputed domain names <fidelity-allows-fraud.com> and <fidelityallowsfraud.com> (the “Disputed Domain Names”) are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 15, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed two amended Complaints on March 26, 2013.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint and the amended Complaints, and the proceedings commenced on March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2013. Respondent sent an email communication on March 28, 2013 to the Center indicating that the Disputed Domain Names had been deleted. On the same date, the Registrar confirmed that the Disputed Domain Names were still registered and locked, adding that “the Respondent does not have the ability to delete the domains”. The Center sent an email communication to the Parties on April 2, 2013 inviting them to find an amicable settlement. On April 3, 2013, Complainant wrote to Respondent inquiring about its availability to settle, and Respondent replied on April 4, 2013 that the Disputed Domain Names “were already removed. If they need to be reinstated, please contact our parent registrar, eNom”. The Center acknowledged receipt of the Parties’ email exchange on April 5, 2013, and Respondent replied on April 10, 2013 requesting whether any further action or information was needed from it, since it “had already replied […]”. On April 12, 2013, Complainant wrote back stating that it would have preferred to obtain a voluntary cancellation of the Disputed Domain Names, but “if the Respondent does not wish to suspend and effect the cancellations within the suspension period, then the proceedings will simply have to continue”. On the same date, Respondent replied that “As we have previously explained, we have removed the domains from our database/system. This is all the control we have. We are in agreement in that the best course of action would be for the domains to be cancelled, however for this you need to send the complaint to the registrar, which is Enom, INC (http://www.enom.com). The owner of the domains has set us as the point of contact to maintain his/her privacy, but we were only the web host and portal through which the domains were registered”. On April 16, 2013, the Center invited Complainant to submit a request of suspension. On April 17, 2013, Respondent sent an email communication to the Center confirming once again the removal of the Disputed Domain Names, to which the Center replied on April 23, 2013 informing the Parties that it would proceed to Panel Appointment.
On May 1, 2013, Complainant filed a Supplemental Filing requesting to amend the requested remedy from transfer to cancellation of the Disputed Domain Names, which the Panel accepts. On May 2, 2013, the Respondent stated that “again, the domain has already been removed from our services”.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on May 1, 2013. 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 Names were created on October 23, 2012.
Complainant is the registered owner of a large plurality of trademark registrations and applications for the mark FIDELITY and for marks incorporating FIDELITY (collectively, “FIDELITY Trademarks”) in many jurisdictions for a range of financial services and related services (collectively, “FIDELITY Trademark Registrations”), all of which predate registration of the Disputed Domain Names. Two samples of FIDELITY Trademark Registrations are: Community Trademark registration no. 3844925 in Classes 16 and 36, filed on May 21, 2004, and United Kingdom registration no. 2100049 in Class 36, filed on May 13, 1996.
Complainant’s sister company, FMR LLC, is the proprietor of the domain name <fidelity.com>, registered on August 31, 1996.
5. Parties’ Contentions
Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Disputed Domain Names are confusingly similar with the FIDELITY Trademarks in which it has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Names; and that Respondent registered and uses the Disputed Domain Names in bad faith.
Respondent responded to Complainant’s amended Complaints but not to any of the contentions therein. Accordingly, this Panel proceeds on the basis that Respondent does not contest the substance of Complainant’s contentions.
6. Discussion and Findings
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response contesting the substance of Complainant’s contentions is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, supra).
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Since Respondent has not contested the substance of Complainant’s contentions, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the FIDELITY Trademarks and that the Disputed Domain Names are confusingly similar thereto.
Complainant contended in particular that it is, “one of the largest and best-known investment fund managers in the world. […] Complainant, either itself or through its subsidiaries, offers a full range of financial investment services throughout the world to private and corporate investors, including cash and equity ISA options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services for clients with larger investment portfolios, retirement savings, investment trusts and share dealing. Since [the] Complainant was founded over 40 years ago, all of these services have been offered under the brand name FIDELITY and marks including FIDELITY […] Through their substantial business and investment in the promotion of FIDELITY and marks incorporating FIDELITY, [the] Complainant and its subsidiaries have acquired a very considerable reputation and goodwill in FIDELITY and FIDELITY-composite marks in relation to financial services internationally”.
Complainant contended in particular that as of September 30, 2012, its United Kingdom subsidiary alone had over 660,000 customers there and was responsible for looking after assets worth around USD 232.8 billion.
Complainant contended in particular that in the United States, the FIDELITY-branded business carried on by its sister company, is one of that country’s largest mutual fund providers, the leading provider of workplace savings plans, and the top provider of individual retirement accounts, with around USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion as of December 30, 2011.
Complainant asserted its FIDELITY Trademark Registrations and the legal rights established thereby.
Complainant contended in particular that the domain name <fidelity.com> has been used by it and its related companies for over 15 years in relation to its worldwide investment business.
Complainant contended in particular that the Disputed Domain Names are confusingly similar to its FIDELITY Trademarks for the following reasons. The only distinctive element within the Disputed Domain Names - the word “fidelity” - is identical to Complainant’s mark FIDELITY and similar to the remaining FIDELITY Trademarks. The only additional elements within the Disputed Domain Names are the pejorative words “allows fraud” (hyphenated or not) and the non-distinctive generic Top-Level Domain (gTLD) suffix, “.com.” The consensus view among UDRP panels has been that domain names that incorporate a complainant’s trademark and a subsidiary, pejorative word or words are generally regarded as confusingly similar to the trademark. See paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
The Panel accepts Complainant’s contentions on its rights in the FIDELITY Trademarks and on confusing similarity of the Disputed Domain Names to the FIDELITY Trademarks, as uncontroverted, convincing and supported by the evidence.
The Panel concludes that Complainant has met the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant contended in particular the following. The Disputed Domain Names do not link to a live website. Respondent is not commonly known by the Disputed Domain Names, and is not using them or a name corresponding to them in connection with a bona fide offering of goods or services. Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s trademark.
The Panel accepts Complainant’s contentions on Respondent’s rights or legitimate interests in the Disputed Domain Names, as uncontroverted, convincing and supported by the evidence.
The Panel concludes that Complainant has met the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith.
Complainant contended in particular the following about bad faith registration. At the time the Disputed Domain Names were registered, Complainant’s FIDELITY Trademarks were internationally well-known in respect of the provision of financial services. It would be implausible to suggest that Respondent was not aware of Complainant’s FIDELITY Trademarks at that time. The Disputed Domain Names are confusingly similar to Complainant’s FIDELITY Trademarks and are inherently likely to attract Internet users looking for Complainant. There is no plausible explanation for Respondent’s registration of the Disputed Domain Names other than an intention to create domain names that were and are inherently likely to attract Internet users looking for a website relating to Complainant and its company group of businesses.
Complainant contended in particular the following about bad faith use. As the Disputed Domain Names do not link to a live website, no consideration related to “free speech” or “protest”, is possible. Passive holding of the Disputed Domain Names may constitute use in bad faith according to the totality of the circumstances. Complainant urged, as applicable to its situation of “a very considerable reputation and goodwill […] in relation to financial services internationally” with the FIDELITY Trademarks, the decisions of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (in which the panel stated, “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”)
The Panel accepts Complainant’s contentions that Respondent registered and uses the Disputed Domain Names in bad faith, as uncontroverted, convincing and supported by the evidence.
The Panel concludes that Complainant has met the third requirement of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, as requested by Complainant, the Panel orders that the Disputed Domain Names <fidelity-allows-fraud.com> and <fidelityallowsfraud.com> be cancelled.
Mark Ming-Jen Yang
Date: May 8, 2013