WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fil Limited v. Williams Murray

Case No. D2013-0508

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 RGC Jenkins & Co., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Williams Murray of Bratislava, Slovakia.

2. The Domain Name And Registrar

The disputed domain name <fidelityfund.org> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2013. On March 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2013, 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 for the Domain Name.

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, and the proceedings commenced on March 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2013.

The Center appointed Warwick Smith as the sole panelist in this matter on April 19, 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.

An unsolicited Supplemental Filing was submitted by the Complainant on May 1, 2013.

The Panel notes that the Complaint appears to have been properly notified to the Respondent, in accordance with the Rules.

4. Factual Background

A. The Complainant

The Complainant, formerly named “Fidelity International Limited”, is one of the world’s largest investment fund managers. It was found over 40 years ago, and over the years since then the Complainant and its subsidiaries have provided financial services under the brand “Fidelity” and a range of other expressions including the word “Fidelity”. By way of example, a subsidiary of the complainant, “Fidelity Investment Services (UK) Limited”, has traded in the United Kingdom since 1979 under the brand names “Fidelity”, “Fidelity International” and “Fidelity Investments”. Its services have been promoted, inter alia, through a website at “www.fidelity.co.uk”.

The Complainant is the registered proprietor of the word mark FIDELITY in the United Kingdom and in the European Union. The United Kingdom registration for FIDELITY, in International Class 36, is based on an application filed on May 13, 1996. The Community Trademark Registration, in International Classes 16 and 36, is based on an application filed on May 21, 2004.

The Complainant provided examples of the extensive advertising it has run promoting its FIDELITY services online and in major United Kingdom newspapers over the years since 2004. The Complainant estimates that its website at “www.fidelity.co.uk” has attracted a quarter of a million visitors per month since 2006.

B. The Respondent and the Domain Name

The Domain Name was created on October 29, 2012.

The Domain Name does not link to any active website (the Complainant attempted to access a website at the Domain Name on January 28, 2013, but was met with a notice stating that no web page could be displayed).

The Complainant says that there is no evidence of the Respondent ever having traded under the name “Fidelity Investment”, notwithstanding that that name appears in the WhoIs particulars for the Domain Name.

The Respondent is not known to the Complainant or any members of the corporate group of which the Complainant is a member.

C. Pre-Commencement Correspondence

On January 28, 2013, the Complainant’s representative contacted the Respondent drawing attention to the Complainant’s rights in its FIDELITY marks, and requesting a transfer of the Domain Name to the Complainant on payment of all of the Respondent’s out-of-pocket registration costs for the Domain Name.

On February 20, 2013, the Respondent replied by email, stating:

“I registered this domain with the intention to use it for my own fund management transaction not knowing that the domain belongs to your client.”

The Respondent said that it was “ready to release the domain to your client if only they could reimburse me my fund”.

The Complainant’s representative replied on February 21, 2013, repeating their client’s offer to reimburse the Respondent’s out-of-pocket costs, and asking the Respondent to advise what those costs were.

The Respondent replied on February 27, 2013, asking:

“how much does your client wanted to offer for the domain so that i can release the detailed information.”

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusingly similar to the Complainant’s FIDELITY mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name.

It is not commonly known by the Domain Name, and is not using the Domain Name in connection with any bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark. The Respondent’s assertion in its reply to the Complainant’s cease and desist letter that it intended to use the Domain Name for a “fund management transaction” is not explained, and is not supported by any corroborating evidence.

3. The Domain Name was registered and is being used in bad faith:

(i) The Respondent must have been aware of the Complainant’s FIDELITY marks when the Domain Name was registered, having regard to:

(a) its expressed interest in a “fund management transaction”;

(b) its use of the expression “Fidelity Investment” in the WhoIs particulars for the Domain Name;

(c) the international repute of the Complainant’s FIDELITY marks in the financial services field.

(ii) There is no plausible reason for the Respondent to have chosen the Domain Name, other than an intention to create a website which would lure Internet users looking for a website relating to the Complainant and its corporate group.

(iii) Passive holding of a domain name may constitute bad faith registration and use (citing Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

(iv) The incorporation of the Complainant’s well-known trademark in the Domain Name suggests opportunistic bad faith (citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenics Group Co, WIPO Case No. D2000-0163).

(v) The Respondent’s use of the Domain Name, which is inherently misleading, is intrinsically likely to disrupt the Complainant’s business by diverting Internet traffic intended for the Complainant, to the Respondent’s website. The Respondent might therefore have presumed that the Complainant would be prepared to pay a substantial sum for the transfer of the Domain Name.

(vi) The Respondent’s registration and use of the Domain Name reflect a deliberate intention to create a nuisance and to interfere with the Complainant’s business, such that the Complainant or one of its competitors might be expected to pay valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name in order to secure its transfer. Furthermore, the Respondent’s invitation to the Complainant to “make an offer” for the Domain Name confirms that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of its out-of-pocket registration costs.

B. Respondent

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

6. Discussion And Findings

A. Supplemental Submission

The Complainant provided an unsolicited supplemental submission on May 1, 2013. The Panel notes that the Policy makes no provision for unsolicited additional filings, although in an appropriate case a panel may admit and consider a late or supplemental filing, subject to considerations of procedural fairness to the other party. In the Panel’s view the justice of this case does not require the late submission to be admitted, and the Panel declines to do so.

B. What the Complainant must prove under the Policy - General

Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

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

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the Panel to:

“… 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”.

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.

C. Identical or Confusingly Similar

The Complainant has proved that it is the registered proprietor of the word mark FIDELITY in the United Kingdom and in the European Union, and it accordingly has rights in that trademark for the purposes of paragraph 4(a)(i) of the Policy.

The Panel is satisfied that the Domain Name is confusingly similar to that mark. The consensus view of UDRP panels is that, in order to satisfy the “confusing similarity” test, a complainant’s trademark generally needs to be recognisable as such within the disputed domain name, “with the addition of common, dictionary, descriptive … terms … typically being regarded as insufficient to prevent threshold Internet user confusion”. Application of the confusing similarity test typically involves a straightforward visual or aural comparison of the complainant’s trademark with the alpha-numeric string in the disputed domain name.¹

In this case, the Complainant’s FIDELITY mark is clearly recognisable within the Domain Name, and the only addition is the common, dictionary word “fund” (the “.org” suffix is not taken into account in the comparison). Additionally in this case, the common dictionary word which has been included in the Domain Name with the Complainant’s mark (“fund”) is a word which Internet users familiar with the Complainant would immediately associate with one of the Complainant’s services offered under its FIDELITY mark. That could only increase the level of confusion arising from the use of the Complainant’s FIDELITY mark in the Domain Name.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for the Respondent to demonstrate that it has rights to, or legitimate interests in the Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the Respondent] of the dispute, use by [the Respondent] of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Where [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the Domain Name, even if [the Respondent has] acquired no trade mark or service mark rights; or

(ii) Where [the Respondent is] making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview 2.0, as follows:

“… 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.”

In this case, the Domain Name is confusingly similar to the Complainant’s FIDELITY marks, and the Respondent has no license or other authority from the Complainant to use its marks, whether in a domain name or otherwise. The reference in the WhoIs particulars to “Fidelity Investment” is insufficient (without additional evidence) to form a basis for the “commonly known by” defense at paragraph 4(c)(ii) of the Policy, and the Respondent’s February 2013 emails did not in any event attempt to invoke that paragraph. The Domain Name apparently does not resolve to any actual website, and there is no evidence of the Respondent having made any “demonstrable preparations” to use the Domain Name in connection with any bona fide offering of goods or services. There is therefore nothing in the evidence to suggest that the Respondent might have a defense under either paragraph 4(c)(i) or 4(c)(iii) of the Policy.

In those circumstances, the Complainant has established a prima facie case of “no rights or legitimate interests”, and the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that it has rights or legitimate interests in the Domain Name. As no Response has been filed, that burden has not been discharged, and the Complainant’s prima facie proof prevails. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:

“(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name.”

The Panel is satisfied that the Complainant has proved circumstances falling within this subparagraph.

First, the Panel is satisfied that the Respondent was aware of the Complainant and its FIDELITY mark when it registered the Domain Name. The Complainant has held a European Union registration of its FIDELITY mark since 2004, and the Respondent appears to reside in Slovakia, a member country of the European Union, in which the Complainant’s mark is in force. The Respondent has not denied knowledge of the Complainant or its FIDELITY mark, either in its February 2013 emails or by way of Response in this proceeding – it has said only that it did not know that “the domain belongs to [the Complainant]”. Its emails show (at minimum) that it had an interest in the general topic of funds management, and of course the Complainant is a major player in Europe in that field. Further, its use of the expression “Fidelity Investment” in the WhoIs particulars suggests, in the absence of any other explanation, an awareness of the “Fidelity Investments” brand under which the Complainant has traded.

Secondly, the Respondent must have appreciated that any website it might establish at the Domain Name would attract Internet users looking for the Complainant, and that if it did create such a website, it would probably come to the attention of the Complainant fairly quickly (adding “Fidelity Investment” after its name in the WhoIs particulars would only have made that happen sooner rather than later).

Thirdly, the Respondent has not established any website at the Domain Name in the period of approximately 6 months since it was registered, and its email dated February 20, 2013 does not suggest that he was then operating a business which might have been concerned with any “fund”. It did not explain why it chose the name “Fidelity”.

Fourthly, the Respondent’s initial response on receiving the Complainant’s cease and desist letter was that it would voluntarily transfer the Domain Name to the Complainant if it reimbursed it the “fund”. In the context, that appeared to be a reference to the Respondent’s out-of-pocket-expenses associated with the registration of the Domain Name. However when the Complainant’s representatives asked what those expenses were, the Respondent did not give any answer. Instead, it invited the Complainant to make an offer for the Domain Name “so that I can release the detailed information”. How receiving an offer for the Domain Name would help the Respondent calculate its own out-of-pocket expenses relating to the Domain Name, was not explained.

In the foregoing circumstances, and in the absence of any Response to the Complaint, the Panel concludes that the Respondent’s primary intention in registering the Domain Name was probably to provoke an offer from the Complainant for the Domain Name which would exceed the Respondent’s out-of-pocket costs directly related to the Domain Name, and that the circumstances fall within paragraph 4(b)(i) of the Policy.

In the absence of any countervailing evidence, proof of circumstances falling within paragraph 4(b)(i) is sufficient proof of registration and use in bad faith, and it is unnecessary for the Panel to consider the Complainant’s other contentions (including its argument based on alleged bad faith use by passive holding of the Domain Name).

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 Domain Name <fidelityfund.org> be transferred to the Complainant.

Warwick Smith
Sole Panelist
Date: May 3, 2013

¹ Paragraph 1.2, “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0”.)