WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Jose Enrique De Las Penas, International Marketing Group

Case No. D2018-2367

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 CSC Digital Brand Services Group AB, Sweden.

The Respondent is Jose Enrique De Las Penas, International Marketing Group of Makati, Philippines, represented by Romulo Mabanta Buenaventura Sayoc and de Los Angeles Law Office, Philippines.

2. The Domain Names and Registrar

The disputed domain names <fidelitymutual.life> and <fidelitymutuallife.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Response was filed with the Center on November 13, 2018.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 22, 2018. 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.

After the Panel had prepared the decision, the Complainant sought to file an unsolicited supplemental filing dated December 10, 2018. Apart from submissions requested by the Panel, paragraph 12 of the Rules does not contemplate further submissions after the Complaint and Response. UDRP panels (including the present Panel) do from time to time accept supplemental filings in limited circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

The present is not such a case. The proposed supplemental filing is far too late. As noted above, the Complainant has had notice of the Response since November 13, 2018 or very shortly thereafter. The Panel was appointed on November 22, 2018. No explanation for the long delay has been provided. Accordingly, the Panel does not exercise his discretion to admit the proposed supplemental filing in the present case.

4. Factual Background

Fidelity Investments was established in the United States of America (“United States”) in 1946. In 1969, it established “Fidelity International Limited” as its international investment arm. In 1980, Fidelity International Limited “was spun off and became independent of the US organization and is today owned mainly by management and members of the original founding family”. In February 2008, Fidelity International Limited changed its name to its current name, FIL Limited – the Complainant.

According to the Complaint, the Complainant is now the parent company of numerous subsidiaries around the world. It serves investors in 25 countries across Asia Pacific, Europe, the Middle East, and South America. It has USD 290 billion in assets under management, 400 investment professionals and research staff, and approximately 7,000 employees. It has won numerous awards. In 2016 alone, according to the Complaint, it won more than 200 awards across Europe and Asia.

According to the Complaint, the Complainant has numerous domain names incorporating the FIDELITY trademark. Its primary domain name is <fidelity.co.uk> which received 1,000,000 total visits between May 2017 and October 2017. The United States company, FMR LLC, which the Complaint describes as an “affiliate” of the Complainant, maintains the website “www.fidelity.com” which, according to the Complaint, received more than 54 million visits in the same period; making it the 150th most popular website in the United States.

The Complaint includes evidence of the Complainant’s ownership of four registered trademarks:

(a) Philippines Registered Trademark No. 4-2016-504798, FIDELITY, which was filed on September 19, 2016 and registered on December 8, 2018 in respect of the following services in International Class 36:

“Financial services; insurance services; investment services; international and domestic fund investment; discretionary investment management services; investment advisory services; mutual funds and services related thereto; pensions and services related thereto; securities brokerage and services related thereto; banking and services related thereto; trusteeship and services related thereto; portfolio, mutual fund, pension and trust administration services; financial management and planning; financial advice; credit‑services; credit management services; investment banking, corporate finance and venture capital services; private equity services; real estate services; real estate investment services; securities underwriting; derivative and currency exchange services; provision of information, advice and consultancy relating to securities, finance and investments; interactive database information services relating to securities, finance and investments; credit and debit card services; money payment services; provision of secured and unsecured loans; exchanging money; antique appraisal; brokerage; surety services; charitable fund raising; lending against security; instalment loans; mortgage banking; business liquidation services; stock exchange quotations; rent collection; financial analysis services for businesses; provision of information, advice and consultancy relating to all the foregoing.”

(b) United Kingdom Registered Trademark No. 00002100049, FIDELITY, which was registered on December 6, 1996 in respect of Investment services; financial management and advice; investment portfolio management services in International Class 36;

(c) European Union Registered Trademark (“EUTM”) No. 003844925, FIDELITY, which was registered on September 21, 2005 in respect of a range of printed materials and stationery in International Class 16 and a wide range of services in International Class 36;

(d) EUTM No. 003845047, FIDELITY INVESTMENTS and device, which was registered on October 10, 2005 in respect of the range of goods and services as EUTM No. 003844925.

The Respondent registered the disputed domain names on April 29, 2015.

The individually named Respondent, Snr De Las Penas, was one of the incorporators of a company incorporated on October 23, 2012 in the Philippines under the name Fidelity Mutual Life Inc. On August 15, 2016, Fidelity Mutual Life Inc. changed its corporate name to Fidelity Life Mutual Benefit Association Inc.

Fidelity Mutual Life Inc. has operated as a mutual benefits association providing what may be described broadly as life, health and unemployment insurance services. It received its first Mutual Benefits Licence in its own name from the Philippines Insurance Commission in August 2014. According to the Response, its services are available exclusively to members of the named corporate Respondent. Apparently, it currently has some 9,363 members with active policies.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks for FIDELITY set out in section 4 above and also the registered trademark for FIDELITY INVESTMENTS and device. The Panel notes that the word FIDELITY is by far the most prominent and striking element of the FIDELITY INVESTMENTS and device mark.

The second stage of this inquiry simply requires a visual and aural comparison of each disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component of each disputed domain name as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7.

Disregarding the gTLD, the disputed domain names differ from the Complainant’s a FIDELITY trademark by the addition of the verbal elements “mutual” or “mutual life”. The Complainant’s FIDELITY trademark is plainly and distinctly recognizable in both disputed domain names. The addition of the descriptive words “mutual” or “mutual life” do not mean, as the Respondent contends, that the disputed domain names are not confusingly similar to the Complainant’s trademark. In any event, the Respondent’s contentions are based on a mistaken understanding of the nature of the test under the first limb of the Policy. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

It is not in dispute between the parties that the Respondent is not affiliated with the Complainant in any way and has not been licensed or otherwise permitted to use the Complainant’s trademark.

The Complainant contends that the disputed domain names are not derived from the Respondent’s name or any name by which it is commonly known. As noted above, however, the Respondent is closely associated with the mutual benefit association originally incorporated in the Philippines in 2012 under the name Fidelity Mutual Life Inc.

Contrary to the Respondent’s claim, the services provided by the mutual benefit association, types of insurance services, appear to fall directly within the scope of the Complainant’s registered trademark in the Philippines.

The incorporation of the mutual benefit association, however, occurred well before the Complainant registered its trademark in the Philippines – the application for which was filed on September 19, 2016. Indeed, the Respondent also registered the two disputed domain names well before that date – on April 29, 2015.

Although the incorporation of Fidelity Mutual Life Inc. and the registration of the disputed domain names occurred well before the date of the Complainant’s trademark registration in the Philippines, both the incorporation and the registration of the disputed domain names occurred well after the Complainant’s predecessors commenced using the FIDELITY trademark and well after the Complainant’s trademarks were registered in the United Kingdom of Great Britain and Northern Ireland and Europe. The Complaint also states that the Complainant has been providing its services since 1969 “in 25 countries across Asia Pacific, Europe, the Middle East and South America”.

The Complainant points to the similarity between the device element in EUTM No. 003845047 and the device being used on the website to which the disputed domain names resolve as evidence of lack of good faith. In addition, the Complainant argues the green colour scheme used on the mutual benefit association’s websites closely resembles the green colour scheme used by the Complainant’s American “affiliate”.

Taking those matters into account, however, the Respondent claims that the Complainant does not carry on business in the Philippines. Moreover, the Respondent claims that various of the Complainant’s trademarks in the Philippines have been removed for non-use. The Response includes evidence to support that claim. This would appear to indicate that it is legitimate under Philippines law for the mutual benefit association to continue operating under its name. Whether that is in fact the case ultimately requires more extensive evidence and consideration of the operation of Philippines law in the particular circumstances of this case than the record in this administrative proceeding permits.

In these circumstances, whatever may be the case in other parts of the world, the Respondent appears to have rebutted the prima facie case made out by the Complainant. On the record in this administrative proceeding, therefore, the Complainant has not demonstrated the Respondent, through the mutual benefit association, does not have the right under relevant law to continue operating under its chosen name.

As the Complainant has not established the second requirement under the Policy, the Complaint must fail.

C. Registered and Used in Bad Faith

As the Complaint must fail, no good purpose would be served be considering the issues arising under the third factor.

6. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist
Date: December 11, 2018