WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Namespro Private WHOIS
Case No. D2014-0599
1. The Parties
Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom, represented by RGC Jenkins & Co., United Kingdom of Great Britain and Northern Ireland ("UK").
Respondent is Namespro Private WHOIS of Richmond, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name, <wfidelity.com>, is registered with DNC Holdings, Inc.1 ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on April 11, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is the registrant and providing the contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 19, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 2, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is an investment fund manager. It has used the mark FIDELITY for a broad range of financial investment services for over 40 years. It owns a number of registrations for marks including the term "fidelity" worldwide, including a UK registration for FIDELITY filed in 1996 and a Community Trademark registration for FIDELITY filed in 2004. Complainant's affiliated company, FMR LLC, has used the domain name <fidelity.com> for over 15 years in connection with financial and investment services.
The disputed domain name was registered in September 2013. Printouts annexed to the Complaint show that the domain name appears to resolve to a "pay-per-click" page that displays links identified by topics related to financial services as well as to pornographic sites. Complaintant also alleges that the links related to financial services topics link to pornographic sites.
5. Parties' Contentions
1. Identical or Confusingly Similar
Complainant is one of the largest invesment fund managers in the world; through it and its affiliates it offers services, and is extremely well-known throughout the world.
Complainant owns numerous trademark registraitons for marks that include the term "fidelity", alone or in combination with other terms, for an array of finanical services, including the registrations noted above.
The disputed domain name is confusingly similar to Complainant's trademark: the distinctive element of the domain name is the letter string "wfidelity", which is a typographical error likely to be made by users typing "www.fidelity.com," but inadvertently adding an extra "w" to the right of the dot. The visual differences between Complainant's mark and the domain name are minor.
2. Rights or Legitimate Interests
Respondent is not commonly known by the domain name and is not using it or a name corresponding to it in connection with a bona fide offering of goods or services.
Respondent is not making any legitimate noncommercial or fair use of the domain name.
3. Registered and Used in Bad Faith
It is implausible that Respondent was not aware of Complainant's FIDELITY mark at the time the domain name was registered given the substantial worldwide use and reputation of the FIDELITY marks, the presence of finance-related links on the web page associated with the domain name, and use by Complainant's affiliate fo the <fidelity.com> domain name.
The only plausible explanation is that Respondent intended to register a domain name that was likely to lure Internet users looking for a website relating to Complainant or its corporate group.
The use of the disputed domain name with a pay-per-click page offering links related to financial topics makes it clear that Respondent is intentionally trying to attract visitors for commercial gain by creating a likelihood of confusion with Complainant.
As above, the domain name is a deliberate and foreseeable misspelling of Complainant's FIDELITY trademark.
Under the totality of these circumstances, Respondent's "typosquatting" demonstrates bad faith
Paragraph 4(b)(iv) of the Policy.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect to it; and
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the mark FIDELITY by virtue of the evidence of its trademark registration, including UK and Community trademark registrations.
Respondent's domain name is not identical to Complainant's mark. However, the disputed domain name differs from Complainant's mark only by the letter "w" that precedes "fidelity" and addition of the generic top-level domain.
The Panel is of the view that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name consists of the FIDELITY mark preceded by the letter "w." The Panel agrees that this reflects a typographical error likely to be made by visitors seeking the "www.fidelity.com" website of Complainant's related company (the addition of the generic Top-Level Domain ".com" is not relevant for purposes of this comparison).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy sets out the following examples:
"(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel concludes that Complainant has made a prima facie showing that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.
There is no reason to believe, from the WhoIs record or other information in the case file, that Respondent is or could be known by the domain name. Nor does it appear that Respondent is making a legitimate noncommercial or fair use of the domain name. The domain name does not resolve to an active website; instead, the webpage to which it resolves appears to be a generic one that presumably generates "click through" revenue for the Registrar or Respondent or both. The page contains links that direct the visitor to other sites that purport to offer products that compete with Complainant's financial services, yet at least some of them lead to sites offering pornography and other adult content.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
A complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant's rights in its mark long predate the registration of the domain name. The Panel finds it is most probable that Respondent was aware of Complainant's FIDELITY mark and related financial services at the time the name was registered. Under these circumstances, including the adverse inferences drawn by Respondent's failure to respond, and its apparent use of a privacy service, the Panel finds that Complainant has established that Respondent registered and is using the disputed domain name in bad faith.
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 <wfidelity.com> be transferred to Complainant.
Debra J. Stanek
Date: June 16, 2014
1 The body of the Complaint incorrectly identifies the Registrar as "DNA Holdings, Inc."; however, the annex to the Complaint includes the WhoIs record, which correctly identifies DNC Holdings, Inc. at "www.directnic.com."