WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Yangzhichao/Domain Whois Protection Service, Whois Agent
Case No. D2014-1006
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.
Respondents are Yangzhichao of Hefei, Anhui Province, China; and Domain Whois Protection Service, Whois Agent of Hangzhou, Zhejiang Province, China.
2. The Domain Names and Registrar
The disputed domain names <fidelitycapitalmarket.com> and <fidelitycapitolmarkets.com> (the “Disputed Domain Names”) are registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 23, 2014.
On June 18, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 23, 2014, Complainant confirmed its request that English be the language of the proceeding. Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents of the Complaint in both Chinese and English, and the proceeding commenced on June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 17, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 23, 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
Complainant is the registered owner of numerous trademarks comprising the word “Fidelity” in a number of jurisdictions (the “FIDELITY Marks”). Complainant is an international investment fund management company, offering services under the brand name FIDELITY. Complainant provided over a dozen examples of trademark registrations and applications for FIDELITY and marks incorporating FIDELITY in Annex 7 to the Complaint. Complainant (through its subsidiaries and sister companies) also operates several websites utilizing the FIDELITY Marks, such as “www.fidelity.com” and “www.fidelity.co.uk”.
Respondents Yangzhichao and Domain Whois Protection Service, Whois Agent are based in China. The Disputed Domain Names <fidelitycapitalmarket.com> and <fidelitycapitolmarkets.com> were registered on October 13, 2013.
5. Parties’ Contentions
The Disputed Domain Names are identical and confusingly similar to Complainant’s FIDELITY Marks. Respondents have no rights to or legitimate interests in the Disputed Domain Names. Respondents registered and are using the Disputed Domain Names in bad faith.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004. Insofar as Respondents have not responded, it is appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondents. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Names should be cancelled or transferred:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Preliminary Matters
i. Language of the Proceeding
Complainant has requested that English be recognized as the language of the proceeding. Complainant asserts that it is a Bermudan-based company with no knowledge of Chinese. Respondents have not commented regarding the language of the proceeding. Complainant bases its request on the assertion that Respondents appear to understand English as the Disputed Domain Names link to websites which are entirely in the English language, offering pay-per-click links to third-party websites that are also in English; and the Disputed Domain Names themselves consist of an English-language brand name, FIDELITY, and the English words, “capital market” and “capitol markets.” Based on Complainant’s assertions, it appears Respondents can understand English. Complainant submits that it would be exposed to considerable expense by having to conduct the instant proceeding in Chinese. Taking the foregoing into account, along with Respondents’ default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceeding. Translation of the Complaint and other materials would cause unnecessary cost and delay.
B. Identical or Confusingly Similar
To prove this element, Complainant must have trademark rights and the Disputed Domain Names must be identical or confusingly similar to Complainant’s trademark.
It is clear that Complainant has rights in the FIDELITY Marks and that the FIDELITY Marks are distinctive and well-known by the public for providing financial services. As stated above, Complainant is the registered owner of numerous trademarks comprising the word FIDELITY in a number of jurisdictions. Further, the record shows Complainant owned rights in the FIDELITY Marks long before the Disputed Domain Names were registered.
The Disputed Domain Names incorporate the FIDELITY Marks in their entirety. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. Zuccarini, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Furthermore, the Disputed Domain Names <fidelitycapitalmarket.com> and <fidelitycapitolmarkets.com> simply add variations of the term “capital market” to Complainant’s FIDELITY Marks. The term “capital market” denotes markets for buying and selling equity and debt instruments and in particular the trading of financial securities such as bonds and stocks. Thus, these words are descriptive of the services provided by Complainant under its FIDELITY Marks. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. Although the risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, that risk is particularly great where the term describes a central aspect of complainant’s business, as in this case. Such a combination “in all likelihood heightens the confusion”. The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931; see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373. In this case, the addition of variations of the descriptive term “capital market” to the FIDELITY Marks likely heightens consumer confusion because the FIDELITY Marks are well-known for financial services.
It is therefore likely that consumers would be confused by the use of the trademark in the Disputed Domain Names. In light of the foregoing, the Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondents are associated or affiliated with Complainant or that Respondents have any other rights or legitimate interests in the term “Fidelity”. A complainant is required to make out an initial prima facie case that respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d. d. v. WACHEM d.o.o. WIPO Case No. D2004-0110. The Panel finds that Complainant has successfully presented a prima facie case which Respondents have not rebutted. Respondents have filed no response. Without a response, there is nothing in the case file that indicates that Respondents have a right or legitimate interest in the Disputed Domain Names. Further, as discussed below, the Panel also finds that Respondents are not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondents’ use of the Disputed Domain Names is a legitimate noncommercial or fair use, or that Respondents are commonly known by the Disputed Domain Names.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The record shows Complainant owns trademark rights in the FIDELITY Marks that predate creation of the Disputed Domain Names. The Disputed Domain Names contain Complainant’s mark in its entirety. Given the international recognition of Complainant, the Panel finds that Respondents were likely aware of or should have known of Complainant’s rights in the FIDELITY Marks when registering the Disputed Domain Names. Where the mark is well-known and famous, a trader would not choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondents have not offered any argument with respect to its selection of the term “Fidelity” and its incorporation into the Disputed Domain Names, and, in the absence of an explanation, the most likely explanation is that is was chosen with Complainant’s mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181.
Complainant submits that Respondents are using the Disputed Domain Names in bad faith by attempting to trade on the international fame of the FIDELITY Marks in order to profit from pay-per-click links to third-party financial service websites. Complainant further submits that, by the Disputed Domain Names are inherently likely to lure Internet users looking for a website relating to Complainant and its corporate group and to capital market investment-related services provided by, or in some way connected to, Complainant. The Panel agrees. Pay-per-click websites generate revenue by offering links and when an Internet user clicks on these links, the entity sponsoring that link will make a payment to the site owner. Generating revenue from domain name parking activities is bad faith use where the registrant is using the domain name in this manner because of its similarity to a mark of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page. Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699; “Dr. Martens” International Trading GmbH. and “Dr. Martens” Marking GmbH v. Private Whois Service, WIPO Case No. D2011-1191. As already discussed, Respondents are using the Disputed Domain Names to attempt to trade on the fame of Complainant’s FIDELITY Marks. This is evidence of the intention by Respondents to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or of a product or service on Respondents’ websites.
Thus, on the record before it the Panel finds that, by using Disputed Domain Names that are confusingly similar to Complainant’s FIDELITY Marks to profit from pay-per-click links to third-party financial service websites it is clear that Respondents have intentionally set out to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with Complainant. Accordingly, the Panel finds that Respondents registered and are using the Disputed Domain Names in bad faith. For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.
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 Names, <fidelitycapitalmarket.com> and <fidelitycapitolmarkets.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: July 31, 2014