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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Elliott Evans

Case No. D2014-0259

1. The Parties

The Complainant is FIL Limited, of Bermuda, the Overseas Territory of United Kingdom of Great Britain and Northern Ireland (“UK”), represented by RGC Jenkins & Co., UK.

The Respondent is Elliott Evans of Houston, Texas, United States of America (“USA”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <fundnetwork.org> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2014. On February 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 26, 2014. The Response was filed with the Center on March 14, 2014.

On March 27, 2014, the Complainant emailed the Center, attaching supplemental submissions in response to the Respondent’s submissions. The Center replied to the Complainant on March 28, 2014, advising that the supplementary material received would be forwarded to the Panel and that the Panel would determine the admissibility of the material.

The Center appointed John Swinson as the sole panelist in this matter on March 31, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is FIL Limited, a Bermudan company. It is a large and well-known investment fund manager that has been operating for 40 years. Since at least 2001, the Complainant has been using the trade mark FUNDSNETWORK in relation to the provision of investment platform services.

The Complainant owns the following registrations for FUNDSNETWORK as a word mark:

- UK Trade Mark Registration No. 00002447480 (filed February 21, 2007); and

- Community Trade Mark Registration No. 006181093 (filed August 8, 2007)

(collectively, the “Trade Mark”).

The Complainant also owns a number of other trade mark registrations and domain names that incorporate the Trade Mark.

The Respondent is the individual Elliot Evans, of the USA. The Respondent registered the Disputed Domain Name on June 14, 2013. The Disputed Domain Name currently resolves to a parking page, that at one time displayed a variety of links, including finance and investment related links.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

(i) Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Trade Mark. The only difference is that the letter “s” is omitted from the Disputed Domain Name.

(ii) Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name as the Respondent is not:

- commonly known by the Disputed Domain Name;

- using the Disputed Domain Name, or a corresponding name, in relation to a bona fide offering of goods or services; or

- making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Disputed Domain Name is being used to direct users to a pay-per-click landing site, which includes links to the Complainant’s competitors. Presumably, the Complainant is profiting from click-through revenue.

(iii) Registered and Used in Bad Faith

Given the Complainant’s reputation, the Respondent must have been aware of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name. This knowledge is further evidenced by the similarity of the Disputed Domain Name and the Trade Mark and the links to the Complainant’s competitors on the website at the Disputed Domain Name.

The Disputed Domain Name appears to be a deliberate misspelling of the Trade Mark (i.e. “typosquatting”). In conjunction with the links to the Complainant’s competitors, this shows that the Respondent has intentionally set out to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant. The Respondent will derive click-through revenue from the confusion of Internet users.

Additionally, the Respondent failed to respond to a letter of demand from the Complainant, requesting voluntary transfer of the Disputed Domain Name.

B. Respondent

The Respondent makes the following submissions.

(i) Identical or Confusingly Similar

The Disputed Domain Name is substantially different from the Trade Mark.

(ii) Rights or Legitimate Interests

The Disputed Domain Name was registered for the nonprofit business purpose of crowd funding. Any similarities to the Trade Mark are incidental and unintended.

The website at the Disputed Domain Name is not a pay-per-click landing site. It is a website for the Registrar. The Respondent has not needed to utilize the website yet and reserves the right to use it for its nonprofit purpose in the future.

(iii) Registered and Used in Bad Faith

The Disputed Domain Name was not registered and has not been used in bad faith. The Respondent had no awareness of the Complainant or its Trade Mark before this Complaint. The Trade Mark is a UK trade mark and the Respondent lives in the USA.

The Respondent registered the Disputed Domain Name for nonprofit purposes. The Respondent is not a competitor of the Complainant and the Respondent did not register the Disputed Domain Name to inhibit the Respondent’s business.

(iv) Reverse Domain Name Hijacking

The Respondent requests that the Panel make a finding of reverse domain name hijacking. The Complaint was filed “in order to bully the Respondent into transferring his domain name”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

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

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

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

A. Procedural Matters

The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.

The Complainant has provided supplementary submissions that offer rebuttal arguments and address the Respondent’s allegation of reverse domain name hijacking. They do not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel has verified that the Complainant has rights in the Trade Mark.

The Disputed Domain Name is confusingly similar to the Trade Mark, both visually and aurally. The only difference is the omission of the letter “s” in the Disputed Domain Name (i.e. the Trade Mark contains the plural “funds” and the Disputed Domain Name the singular “fund”). The Panel finds that this insignificant change fails to distinguish the Disputed Domain Name from the Trade Mark (see, e.g. Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058).

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case for the following reasons:

- the Respondent has no connection with the Complainant;

- the Complainant has not consented to the Respondent’s use of the Trade Mark; and

- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has used a term similar to the Disputed Domain Name in any business.

The Respondent has not provided sufficient evidence to rebut the Complainant’s prima facie case. The Respondent claims that it registered the Disputed Domain Name in order to operate a nonprofit website about crowd funding. However, the website at the Disputed Domain Name is not being used for this purpose. Further, the Respondent provided no evidence of this alleged business, or of any plans to use the website (aside from stating that it “reserves its right” to use the website for nonprofit purposes in the future). The Respondent had the opportunity to provide demonstrable preparations to use “fundnetwork” but failed to do so.

The website at the Disputed Domain Name hosted a variety of pay-per-click links, including links to the Complainant’s competitors. In the absence of any evidence from the Respondent to the contrary, the Panel is of the view that this does not amount to a bona fide use for the purposes of the Policy.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b) of the Policy enumerates four non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant and the Trade Mark are well known, particularly in relation to investment related products and services. Based on the evidence before the Panel, and despite the Respondent alleging the contrary, the Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name was likely aware that the Complainant was the owner of the Trade Mark.

The Respondent has submitted that the website at the Disputed Domain Name is a website for the Registrar, not a pay-per-click landing site. While not entirely clear, it appears that the Respondent’s submission is that the content of the website is not within the Respondent’s control. This situation is dealt with at paragraph 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states:

“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or “commercial gain” was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).

Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”

The Panel finds that the circumstances of this case do not justify an exception and that the presence of certain advertising or links at the website associated with the Disputed Domain Name constitutes evidence of bad faith use on the part of the Respondent.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

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, <fundnetwork.org>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 12, 2014

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