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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. PrivacyProtect.org, Domain Admin / Bob Pham

Case No. D2014-0991

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 PrivacyProtect.org, Domain Admin of Nobby Beach, Australia / Bob Pham of Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <planfidelity.com> is registered with Media Elite Holdings Limited (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2014. On June 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 23, 2014.

The Center verified that the Complaint together with 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 June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 15, 2014.

The Center appointed Gregory N. Albright as the sole panelist in this matter on July 28, 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, an investment fund manager, is the owner of a United Kingdom registration for the trademark FIDELITY in Class 36, filed May 13, 1996, and a Community registration for the trademark FIDELITY in Classes 16 and 36, filed May 21, 2004. The Complainant is also the owner of numerous other Community and United Kingdom registrations for marks that incorporate FIDELITY, including FIDELITY INVESTMENTS, for example.

The disputed domain name <planfidelity.com> was registered on November 18, 2013.

5. Parties' Contentions

A. Complainant

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant 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 in 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 ISA 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 was founded over 40 years ago, all of these services have been offered under the brand name FIDELITY and marks including FIDELITY ("the FIDELITY Marks").

The Complainant's United Kingdom subsidiary, FIL Investment Services (UK) Limited, is one of the largest investment fund managers in the United Kingdom. Since 1979, FIL Investment and its related companies and predecessors in business have traded in the field of financial services in the United Kingdom under the brand names FIDELITY, FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS and numerous other sub-brands preceded by the core FIDELITY name.

For at least the last 12 years or so, the Complainant and its subsidiaries have placed banners and sponsored content on at least 35 different third-party financial and corporate websites targeting investors and financial advisors around the world, including widely consulted financial websites. The Complainant and its subsidiaries have also invested in sponsored ads through the reservation of commonly searched investment terms such as "personal pensions" as keywords on major search engines, which result in links to advertisements for the services of the Complainant and its subsidiaries under the FIDELITY Marks being prominently displayed whenever the reserved terms are searched.

For at least the last 20 years the Complainant and its subsidiaries, including FIL Investment, have also promoted services provided under the FIDELITY Marks on the Internet website "www.fidelity.co.uk". The Complainant and its subsidiaries, including FIL Investment, have invested regularly and substantially over the years in website optimization to ensure maximum visibility of that website to Internet users searching for common investment terms. Based on visitor statistics for the "www.fidelity.co.uk"website from 2006, the Complainant estimates that it has at least a quarter of a million visitors to that website every month, and probably more.

The success and high profile of the Complainant and its subsidiaries under the FIDELITY Marks in the financial services field have given rise to numerous industry awards and praise and recognition from throughout the financial services industry.

The FIDELITY-branded financial services business carried on in the United States by the Complainant's sister company, FMR LLC, is promoted on the website "www.fidelity.com", which also attracts substantial numbers of visitors.

The Complainant is the registered proprietor of the following trademark registrations and applications for FIDELITY and marks incorporating FIDELITY for a wide range of financial services and related services, all of which pre-date registration of the disputed domain name:

- Community Trademark registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on 21 May 2004;

- United Kingdom registration no. 2100049 for FIDELITY in Class 36, filed on 13 May 1996;

- United Kingdom registration no. 1310766 for FIDELITY INVESTMENTS in Class 36, filed on 21 May 1987;

- Community Trademark registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on 21 May 2004;

- United Kingdom registration no. 2100004 for FIDELITY INVESTMENTS Logo in Class 36, filed on 13 May 1996;

- United Kingdom registration no. 2351340 for FIDELITY INVESTMENTS Logo in Class 36, filed on 15 December 2003;

- Community Trademark registration no. 3845047 for FIDELITY INVESTMENTS Logo in Class 36, filed on 21 May 2004;

- United Kingdom registration no. 2554033 for FIDELITY INVESTMENT MANAGERS Logo [Series of Two] in Class 36, filed on 23 July 2010;

- United Kingdom registration no. 2583955 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [Series of Two] in Class 36, filed on 8 June 2011;

- Community Trademark registration no. 9313065 for FIDELITY INVESTMENT MANAGERS Logo in Classes 35, 36 and 42, filed on 21 July 2010;

- Community Trademark registration no. 9313099 for FIDELITY INVESTMENT MANAGERS Logo [in Color] in Classes 35, 36 and 42, filed on 21 July 2010;

- Community Trademark registration no. 10054377 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo in Classes 35, 36 and 42, filed on 16 June 2011;

- Community Trademark registration no. 10054393 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [in Color] in Classes 35, 36 and 42, filed on 16 June 2011;

- United Kingdom registration no. 2398490 for FIDELITY INTERNATIONAL in Class 36, filed on 3 August 2005;

- Community Trademark registration no. 4579009 for FIDELITY INTERNATIONAL in Classes 16, 35 and 36, filed on 4 August 2005;

- United Kingdom registration no. 2398491 for FIDELITY INTERNATIONAL Logo in Class 36, filed on 3 August 2005;

- Community Trademark registration no. 4579041 for FIDELITY INTERNATIONAL Logo in Classes 16, 35 and 36, filed on 4 August 2005; and

- Community Trademark registration no. 4579058 for FIDELITY INTERNATIONAL Logo [in Color] in Classes 16, 35 and 36, filed on 4 August 2005.

The Complainant's sister company, FMR LLC, also owns the domain name <fidelity.com>, registered on August 31, 1996 and in use for over 15 years in relation to the worldwide investment business carried on by FMR LLC and the Complainant under the FIDELITY mark.

The Complainant has also adduced some evidence that it invests in the Vietnam market, reportedly one of the fastest growing economies in Asia, where Respondent Bob Pham is located.

The disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The distinctive element of the disputed domain name is the word "fidelity", with the only additional element being the descriptive word "plan". The word "plan" is commonly used in respect of financial services, for example, in relation to "financial plans", "retirement plans", "pension plans", "investment plans" and the like. This word is therefore directly descriptive of and relevant to the services provided by the Complainant under its FIDELITY trademark and does not serve to distinguish the disputed domain name from the Complainant's FIDELITY trademarks, but rather reinforces the idea that there is a connection between the disputed domain name and the Complainant. The ".com"suffix is non-distinctive and does not diminish the confusing similarity of the disputed domain name and the Complainant's FIDELITY trademark.

Thus, the average Internet user encountering the disputed domain name is likely to assume that he or she is being directed to a website that is that of, or is in some way connected to, the Complainant. See National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 ("The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark."); Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 ("It is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant's trademark.").

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

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. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

The disputed domain name links to a holding page for a pay-per-click landing site from which the Respondent is presumably deriving click-through income. The search topics on the site relate to financial services, the field in which the Complainant trades, and when they are clicked they take the user through to third-party commercial websites of competing providers of financial services.

The only distinctive element of the disputed domain name is the word "Fidelity", which is well-known as denoting the Complainant's financial services. The attractiveness of the disputed domain name as an address for a pay-per-click landing page is based on the inclusion of the Complainant's distinctive FIDELITY trademark, and the use of the disputed domain name to host pay-per-click links to competing financial services websites shows that the Respondent has sought to gain financially from the confusing similarity of the disputed domain name with the FIDELITY trademark. Such activities do not amount to bona fide commercial use. See ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649 ("linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks"); mVisible Technologies, Inc., v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 ("If the links on a given landing page [...] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting.").

The disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate noncommercial or fair use given the presence on the linked website of pay-per-click links to the Complainant's competitors.

3. The disputed domain name was registered and is being used in bad faith.

It is implausible that the Respondent would not have been aware of the Complainant's FIDELITY Marks at the time the disputed domain name was registered, given the very substantial worldwide use and reputation of the FIDELITY Marks; the presence of finance-related links on the Respondent's pay per click landing page; the use by the Complainant's sister company, FMR LLC, of the similar domain name <fidelity.com> for over 15 years in relation to the financial and investment services; and the Complainant's own use of <fidelity.co.uk> for over 20 years. There is no plausible explanation for the Respondent's registration of the disputed domain name other than an intention to create a domain name that was and is inherently likely to lure Internet users looking for a website relating to the Complainant and its corporate group.

By using the disputed domain name, which is inherently confusingly similar to the Complainant's FIDELITY trademark, in respect of a pay-per-click landing page offering finance-related links to third-party websites it is clear 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 international fame of the FIDELITY Marks combined with the close similarity of the disputed domain name with those marks and with the domain names <fidelity.com> and <fidelity.co.uk> together suggest that the Respondent's registration of the disputed domain name was not coincidental, and that it was driven by knowledge of the Complainant's FIDELITY Marks and of the activities of the Complainant and its sister company at "www.fidelity.co.uk" and "www.fidelity.com".

It will have been obvious to the Respondent that the Complainant would object to any use by the Respondent of such an inherently misleading domain name on the ground that such use is intrinsically likely to disrupt the Complainant's business by diverting Internet traffic intended for the Complainant to the Respondent's website. The Respondent might therefore have assumed that the Complainant would be prepared to pay a substantial sum for the transfer of such a domain name, and that, moreover, competitors of the Complainant might also be prepared to pay a substantial sum to acquire it for their own purposes.

The Respondent's registration and passive holding of the disputed domain name also reflect a deliberate intent to create a nuisance and to 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.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark rights in the FIDELITY mark, and in other marks that incorporate "Fidelity." The Complainant has submitted evidence that it obtained registrations of its marks, and that its marks are well-known (at least in the financial sector), including as a result of the Complainant's use of "Fidelity" in domain names for the Complainant's own websites.

The disputed domain name <planfidelity.com> is confusingly similar to the Complainant's FIDELITY mark. The disputed domain name incorporates the entirety of the mark. "Numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark." PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.

Furthermore, "a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694. Thus, the disputed domain name's confusing similarity with the FIDELITY mark in this case is not eliminated by the Respondent's addition of "plan." As the Complainant asserts, the Respondent likely included "plan" to suggest a reference to the Complainant's financial planning services. For this Panel incorporating a description of the services offered by the owner of the mark compounds rather than avoids confusing similarity.

The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has also made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant has asserted that it has not licensed or otherwise granted the Respondent permission to use the FIDELITY mark.

Further, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the website to which the disputed domain name resolves is a holding page for a pay-per-click landing site from which the Respondent is presumably deriving click-through revenue. And the links lead to websites of third parties who provide financial services in competition with the Complainant.

The Respondent did not come forward to rebut the Complainant's evidence, or to adduce any other evidence that might show that it has any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant established its rights in the FIDELITY marks long before the disputed domain name was registered. The Complainant has shown that the marks, and their connection with Complainant's services, were well-known as a result of the Complainant's widespread and longtime use of the marks in connection with its services, including on the "www.fidelity.co.uk" website, and that the Respondent was therefore likely aware of the Complainant's valuable rights in its marks at the time the disputed domain name was registered. Accordingly, the Respondent registered the disputed domain name in bad faith. The Complainant's evidence supports the conclusion that the Respondent knowingly incorporated the FIDELITY mark in the disputed domain name for the purpose of creating a likelihood of confusion and diverting those who are seeking the Complainant's services to the Respondent's website, for the Respondent's commercial gain. The Respondent therefore is using the disputed domain name in bad faith as per paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <planfidelity.com> be transferred to the Complainant.

Gregory N. Albright
Sole Panelist
Date: August 11, 2014

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