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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. PrivacyProtect.org / Hote Kern

Case No. D2014-0600

1. The Parties

The 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.

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / Hote Kern of Dallas, Texas, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <fidelityinvestmentpartners-uk.com> is registered with Cloud Group Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on April 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 24, 2014.

The Center verified that the amended 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 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014.

The Center appointed Francine Tan as the sole panelist in this matter on June 11, 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

The Complainant asserts it is one of the largest and best-known investment fund managers in the world. It was formerly named and traded as Fidelity International Limited but on February 1, 2008 changed its name to FIL Limited. The Complainant either itself or through its subsidiaries offers a full range of financial investment services throughout the world to private and corporate investors including cash and equity individual savings account options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services for clients with larger investment portfolios, retirement savings, investment trusts and share dealing. Since the Complainant’s formation over 40 years ago, all of these services have been offered under the trade mark FIDELITY and marks including the word FIDELITY including FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS, FIDELITY WORLDWIDE INVESTMENT, FIDELITY GROWTH PARTNERS EUROPE, FIDELITY GROWTH PARTNERS ASIA, and numerous other sub-brands preceded by the core FIDELITY name (“the FIDELITY marks”).

FIL Investment Services (UK) Limited is a UK subsidiary which is in itself one of the largest fund managers in the UK. It has, since 1979, traded in the field of financial services in the UK under the FIDELITY marks.

Through their substantial business and investment in the promotion of the FIDELITY marks, the Complainant, its subsidiaries and related companies have acquired a very considerable reputation and goodwill in the FIDELITY marks in relation to financial services internationally. As of September 30, 2012, FIL Investment (UK) Limited alone had over 660,000 customers in the UK and was responsible for looking after assets worth around USD 232.8 billion. In the US, the FIDELITY-branded business carried on by the Complainant’s sister company, FMR LLC, is one of the country’s largest mutual fund providers, the leading provider of workplace savings plans and the top provider of individual retirement accounts (IRAs) with around USD 3.4 trillion in assets under administration, including managed assets of USD 1.5 trillion as of December 30, 2011.

For at least the last 20 years, the Complainant and its subsidiaries have promoted their services under the FIDELITY marks on the Internet website “www.fidelity.co.uk”. Based on visitor statistics for this website from 2006, the Complainant estimates that it has at least a quarter of a million visitors to that website every month. The Complainant’s sister company, FMR LLC, promotes its FIDELITY-branded financial services business in the US on the website “www.fidelity.com”. The domain name was registered on August 31, 1996 and the website attracts a substantial number of visitors.

For many years the Complainant, its subsidiaries and related companies have promoted services provided under the FIDELITY marks, inter alia, on Internet websites linked to the domain names comprising and incorporating FIDELITY INTERNATIONAL, FIDELITY INVESTMENT, FIDELITY INVESTMENTS and FIDELITY GROWTH PARTNERS, including:

- <fidelityinternational.com> registered on May 31, 2001;

- <fidelityinternational.co.uk> registered on March 21, 2005;

- <fidelityinvestment.com> registered on January 21, 1998;

- <fidelityinvestments.com> registered on May 16, 2000;

- <fidelityinvestments.co.uk> registered on December 9, 1999;

- <fidelitygrowthpartners.com> registered on December 23, 2009;

- <fidelitygrowthpartnerseurope.com> registered on December 23, 2009; and

- <fidelitygrowthpartnersasia.com> registered on December 23, 2009.

The Complainant is the proprietor of numerous registrations and applications for the FIDELITY mark and marks incorporating FIDELITY, for a wide range of financial services and related services, all of which predate the registration of the disputed domain name (September 17, 2013). These include CTM registration Nos. 3844925 for FIDELITY, 3844727 for FIDELITY INVESTMENTS, 3845047 for FIDELITY INVESTMENTS logo, 9313065 for FIDELITY INVESTMENT MANAGERS logo, 9313099 for FIDELITY INVESTMENT MANAGERS logo (in colour), 4579009 for FIDELITY INTERNATIONAL; UK registration Nos. 2100049 for FIDELITY, 1310766 for FIDELITY INVESTMENTS, 2100004 for FIDELITY INVESTMENTS logo, 2398490 for FIDELITY INTERNATIONAL, and 2398491 for FIDELITY INTERNATIONAL logo, etc.

The Complainant’s representatives sent a demand letter to the Respondent on January 17, 2014 to which no reply was received.

5. Parties’ Contentions

A. Complainant

(i) The disputed domain name is confusingly similar to trade marks in which the Complainant has rights.

The first and only distinctive element in the disputed domain name is the word “fidelity” which is identical to the Complainant’s FIDELITY trade mark and similar to the remaining FIDELITY marks. The additional elements in the disputed domain name are descriptive words – “investment”, “partners” – a non-distinctive hyphen, and the abbreviation, “uk” which is a well-known abridgment of “United Kingdom”. The word “investment” denotes investment activities, which is the Complainant’s field of activity, and the word “partners” denotes an affiliation or business partnership. The abbreviation “uk” denotes a geographical region in which the Complainant is known to trade.

Taking the reputation of the FIDELTY marks into account, the disputed domain name is likely to be understood as denoting a website of the Complainant or of a business that is in some way affiliated with the Complainant or with its subsidiaries. The additional elements do not diminish the confusing similarity of the disputed domain name with the Complainant’s FIDELITY marks. Instead, they reinforce the impression that the disputed domain name is in some way associated with, endorsed or authorized by, the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not commonly known by the disputed domain name and is not using it or a name corresponding to it in connection with a bona fide offering of goods or services. Neither is the Respondent making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. The disputed domain name does not link to any content.

(iii) The disputed domain name was registered and is being used in bad faith.

The Respondent’s passive holding of the disputed domain name constitutes bad faith. The international fame of a complainant’s mark also supports a finding that passive holding constitutes use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

At the time of registration of the disputed domain name, the Complainant’s FIDELITY marks were internationally well known in respect of the provision of financial and investment services worldwide. It would be implausible that the Respondent was unaware of the Complainant’s said marks, given the presence of the elements “investment” and “uk” in the disputed domain name. There is no conceivable legitimate use to which the Respondent could put the disputed domain name, taking into account its inherently misleading nature.

The Respondent’s registration and passive holding of the disputed domain name reflects a deliberate intent to create a nuisance and interfere with the Complainant’s business such that the Complainant or one of its competitors might be persuaded to pay valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name in order to secure its transfer. The Respondent’s failure to respond to the Complainant’s demand letter is a further indication of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered rights to the FIDELITY and FIDELITY INVESTMENTS mark. The disputed domain name is indeed confusingly similar to the said trade marks. The addition of the elements “investments”, “partners” and “uk” in the disputed domain name do not serve to remove the confusion but rather, add to it, taking into account the nature of the Complainant’s business activities.

The first element under paragraph 4(a) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

The Panel also finds that there is prima facie evidence of a lack of rights or legitimate interests on the Respondent’s part in relation to the disputed domain name. The Complainant has satisfied its requirement under the provisions of the Policy to establish a prima facie case. The burden is then shifted to the Respondent to prove that it has rights or legitimate interests, which in this case the Respondent has failed to do, by its failure to file any response, whether to the Complainant’s demand letter or in these proceedings. The Panel has no basis upon which to find otherwise for the Respondent.

The second element under paragraph 4(a) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

The Panel finds from the circumstances of this case that there has been bad faith registration and use of the disputed domain name. The Panel agrees with the Complainants’ contention that the passive holding of the disputed domain name containing a well-known mark which further corresponds to the type of and geographical location of the services offered by the Complainant constitutes bad faith.

The Panel is persuaded that the Respondent must have been aware of the Complainant and/or its subsidiaries or affiliates, and of its FIDELITY marks when it registered the disputed domain name, and in the Panel’s assessment, the intention in registration was for the specific and illegitimate purpose asserted by the Complainant. In the absence of any authorization from the Complainant, no bona fide or legitimate use of the disputed domain name can reasonably be claimed by the Respondent.

The third element under paragraph 4(a) of the Policy has therefore been satisfied.

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 <fidelityinvestmentpartners-uk.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: June 28, 2014

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