WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Mike Andrew

Case No. D2014-0591

1. The Parties

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

Respondent is Mike Andrews of Bolton, UK.

2. The Domain Name and Registrar

The disputed domain name <fidelityinvestintl.net> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2014, the Registrar transmitted by email to the Center its verification response confirming 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 with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 16, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2014.

The Center appointed David Perkins as the sole panelist in this matter on May 15, 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 the Rules, paragraph 7.

4. Factual Background

4 A. Complainant

4.A.1 Complainant, formerly Fidelity International Limited, is one of the world’s largest providers of financial investment services, including cash and equity individual savings account options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services, retirement savings, investment trusts and share dealing.

4.A.2 Since Complainant was founded more than 40 years ago, it has provided these services under the FIDELITY brand name and a number of sub-brands all prefixed FIDELITY. For example, FIDELITY INVESTMENTS, FIDELITY INTERNATIONAL and FIDELITY WORLDWIDE INVESTMENT (“the FIDELITY Marks”).

4.A.3. In the UK, Complainant’s subsidiary, FIL Investment Services (UK) Limited (“FIL Investment”), has provided financial services under the FIDELITY Marks since 1979. It is one of the largest fund managers in the UK with over 660,000 customers managing assets (as of September 30, 2012) of some USD 232.8 billion.

4.A.4. Complainant’s United States (“U.S.”) subsidiary, FMR LLC, which trades under the FIDELITY Marks, is one of the country’s largest mutual fund providers. As at December 30, 2011, it had some USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion.

The FIDELITY trademarks

4.A.5. Complainant is the proprietor of, inter alia, the following UK and European Community Trademark (CTM) registered trademarks.

Country

Registration Number

Trademark

Class(es) of Goods and Services

Dates filed and registered

UK

2,100,049

FIDELITY

36

Filed May 13, 1996

Registered December 6, 1996

CTM

3844925

FIDELITY

16 and 36

Filed May 21, 2004

Registered September 21, 2005

UK

1,310,766

FIDELITY INVESTMENTS

36

Filed May 21, 1987

Registered May 24,1991

CTM

3844727

FIDELITY INVESTMENTS

16 and 36

Filed May 21, 2004

Registered September 1, 2005

UK

2,398,490

FIDELITY INTERNATIONAL

36

Filed August 3, 2005

Registered April 28, 2006

CTM

4579009

FIDELITY INTERNATIONAL

16, 35 and 36

Filed August 4, 2005

Registered July 7, 2006

 

The FIDELITY Domain Names

4.A.6. Complainant is the registrant of the following domain names:

Domain Name

Date registered

<fidelityinternational.com>

Registered May 31, 2001

<fidelityinternational.co.uk>

Registered March 21, 2005

<fidelityinvestment.com>

Registered January 21, 1998

<fidelityinvestment.co.uk>

Registered July 14, 2005

 

Use of the FIDELITY Marks

4.A.7. For over 40 years, Complainant states that it and its subsidiary companies have regularly and prominently advertised their services under the FIDELITY Marks. Exhibited to the Complaint are examples of such advertisements placed in The Financial Times, The Times, The Daily Mail, The Sunday Times, The Daily Telegraph, The Mail on Sunday, Investment Trust, Money Observer and What Investments.

4.A.8. For at least the last 20 years, Complainant and its subsidiary companies have promoted their services under the FIDELITY Marks on the website “www.fidelity.co.uk” and based on visitor statistics, that website has since 2006 been visited by at least 250,000 visitors per month. For more than the last 15 years Complainant’s U.S. Company (FMR LLC) has promoted its products also under the FIDELITY Marks through the website “www.fidelity.com”. FMR LLC registered the domain name <fidelity.com> on August 31, 1996.

4.A.9. Exhibited to the Complaint are screenshots from Complainant’s “www.fidelity.co.uk” and “www.fidelity.com” websites. Also exhibited are a selection of industry awards, praise and recognition of the services provided by Complainant and its subsidiaries under and by reference to the FIDELITY Marks.

4.A.10. Complainant also cites examples of banners and sponsored content, which have been placed on some 35 different third-party financial and corporate websites targeting investors and financial advisors around the world.

4.B. Respondent

4.B.1. In the absence of a Response, all that is known about Respondent is contained in the Complaint and provided by the Registrar. These evidence that the disputed domain name was registered on September 10, 2013 and that it currently resolves to a hosting service parking page. Complainant’s “Cease & Desist” letter dated January 20, 2014 addressed to Respondent at the address of the registrant of the disputed domain name was not answered.

5. Parties’ Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1. Complainant’s case is that it has rights in the FIDELITY Marks and that the disputed domain name is confusingly similar to those marks. The first and distinctive element of the disputed domain name, “fidelity”, is identical to Complainant’s FIDELITY Marks. The additional elements, “invest” and the abbreviation “intl”, are - Complainant says - obvious abridgements of “investment” and “international”. Consequently, the disputed domain name is confusingly similar to Complainant’s FIDELITY INVESTMENTS and FIDELITY INTERNATIONAL trademarks listed in paragraph 4.A.5 above.

5.A.2. Given the reputation of the well-known FIDELITY Marks, Complainant’s case is that the disputed domain name is likely to be understood by Internet users as denoting a website of or that is in some way associated with or endorsed by Complainant and its subsidiaries. In the circumstances, Complainant says that the disputed domain name is confusingly similar to the FIDELITY Marks.

Rights or Legitimate Interests

5.A.3. Complainant’s case is that Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy and, consequently, can have no rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

5.A.4. Citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 <telstra.org>; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 <veuveclicquot.org>; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 <pentiumgroup.net>, Complainant asserts that a passive holding can constitute bad faith use for the purposes of paragraph 4(a)(iii) of the Policy. In all three cases the respondent had incorporated a well-known trademark into the disputed domain name having no plausible explanation for doing so. Complainant’s case is that, given the well-known status of the FIDELITY Marks in the UK - where Respondent is based - it cannot be said that the disputed domain name was registered in good faith without Respondent having prior knowledge of the FIDELITY Marks.

5.A.5. Further, although the disputed domain name is currently not in use - see, paragraph 4.B above - given the well-known status of the FIDELITY Marks, the confusing similarity of the disputed domain name with those marks and Respondent’s clear lack of rights or legitimate interests in the disputed domain name, Complainant’s case is that there is no conceivable use to which Respondent could put that name that would not be illegitimate, such as being a passing off or infringement of the FIDELITY Marks.

5.A.6. Complainant also asserts bad faith under paragraph 4(b)(i) of the Policy, citing the decision in Fil Limited v. Williams Murray, WIPO Case No. D2013-0508 <fidelityfund.org>.

5.B. Respondent

As stated, no Response has been filed, nor did Respondent reply to Complainant’s “Cease & Desist” letter of January 20, 2014.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

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

(ii) that 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.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. From the UK and Community Trademarks listed in paragraph 4.A.5 above, it is plain that Complainant has rights in the FIDELITY Marks.

6.6. As to confusingly similarity, Complainant’s case summarised in paragraphs 5.A.1 and 5.A.2 above is well made out.

6.7. Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.8. There is no evidence in the Complaint and its attachments that Respondent could demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. There is no evidence of use, or preparation to use, the disputed domain name in connection with a bona fide offering of goods or services: paragraph 4(c)(i). There is no evidence that Respondent has been commonly known by the disputed domain name: paragraph 4(c)(ii). Nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name: paragraph 4(c)(iii). Indeed, Respondent’s bad faith registration and use of the disputed domain name - as to which, see paragraph 6.10 below - only serves, in the Panel’s opinion, to emphasise his inability to demonstrate circumstances under paragraph 4(c)(i) or (iii). Consequently, the Complaint succeeds under paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.9. Panel finds Complainant’s case of bad faith registration and use (summarised above) persuasive. Given the notoriety of Complainant’s mark, in the Panel’s assessment, it is unlikely that Respondent was unaware of Complainant and its marks when registering the disputed domain name. As to the Complainant’s assertion that the disputed domain name is “passively held”, the Panel agrees with previous UDRP panels who applied the passive holding concept to mere “parking” by a third party, as in this case.

6.10. It is not necessary to address Complainant’s case under paragraph 4(b)(i) of the Policy. Fil Limited v. Williams Murray, supra, referenced by the Complainant, contains additional facts which are not present in this case.

6.11. Consequently, the Complaint satisfies paragraph 4(a)(iii) 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 <fidelityinvestintl.net> be transferred to Complainant.

David Perkins
Sole Panelist
Date: May 19, 2014