WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Domain Administrator, Fundacion Private Whois
Case No. D2013-0849
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.
The Respondent is Domain Administrator, Fundacion Private Whois of Panama City, Panama.
2. The Domain Name And Registrar
The disputed domain name <fidelitymail.org> 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 May 15, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 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.
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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on June 28, 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 complainant is FIl Limited, one of the largest investment fund managers in the world.
FIl Limited, formerly named Fidelity International Limited, operates in Europe, Asia, Africa, far and Middle East, South and North America, providing a full range of financial investment services to private and corporate investors. Proofs of this extent were duly provided by the Complainant.
The Complainant renders these services under the mark FIDELITY for over 40 years, since the foundation of the company. The Complainant and its subsidiaries have been advertising their services under the FIDELITY mark in all kinds of medias.
The Complainant has been promoting services on the Internet website “www.fidelity.co.uk” for the last 20 years. Statistics show that the website has an average of a quarter of a million visitors a month.
The Complainant owns several registrations and applications for the FIDELITY mark, as well as for other marks incorporating FIDELITY, covering a wide range of financial and related services. Proofs of these registrations were duly produced in the Complaint.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <fidelitymail.org> is confusingly similar to the Complainant’s marks registered and used worldwide. In fact, the only distinctive word integrating the disputed domain name is “fidelity”, which is identical to the Complainant’s registered mark.
Besides, the word chosen by the Respondent to compose the disputed domain name together with “fidelity”,is “mail”, a word that is non-distinctive and is directly related to the Internet and electronic communications. This element, instead of distancing the disputed domain name from the Complainant, ends by reinforcing the undesired association.
According to the Complainant, the proceeding adopted by the Respondent to select the disputed domain name – a reproduction of the registered mark associated with a nondistinctive word – shows a clear intention misleading the Internet users to its website. The Complainant underlines that the disputed domain name gives the impression that it is in some way associated with it.
Further contentions will be discussed at the relevant sections, below.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interests in respect to the disputed domain name; and
iii. The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark FIDELITY and other marks formed by this word, registered throughout the world. In addition, the Complainant has been providing a full range of financial investment services worldwide for more than 40 years, always under the FIDELITY marks.
Further, the Panel finds that the disputed domain name, <fidelitymail.org>, is indeed confusingly similar to the trademarks belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of non distinguishing material. Besides, the disputed domain name is confusingly similar to the disputed domain name owned and used by the Complainant to identify its services, namely <fidelity.co.uk>, thus further reinforcing the Panel´s finding.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate Interests
The Panel understands that the word “fidelity” is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify the services rendered by the Complainant for over 40 years. Besides, it is the main part of the Complainant’s existing domain name.
Further, the Complainant provided sufficient evidence of the fame of the mark FIDELITY and the full range of financial investment services rendered under this name to their clients all over the world. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark FIDELITY, and its direct relation to the Complainant. The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights and legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel believes that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.
Besides, with regards to the use of the disputed domain name in bad faith, previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not, as such, prevent a finding of bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Relevantly, the disputed domain name was asserted to be used in September 2012 for an online investment fraud, where a so called Mr. Williams Murray represented himself as fund manager of the Complainant. While this use was temporary, it is a clear evidence of the intention of the Respondent when registered the disputed domain name.
The Panel finds that, for the reasons above, the Respondent registered and is using the disputed domain name in bad faith.
The Panel, hence, finds present the third element.
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, <fidelitymail.org> be transferred to the Complainant.
Date: July 15, 2013