WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Fidelity Capital Trade / Christia Brown

Case No. D2019-2169

1. The Parties

The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.

The Respondent is Fidelity Capital Trade, Bahrain / Christia Brown, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fidelitycapitaltrade.com> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 13, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2019.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 15, 2019. 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 following facts are undisputed.

The Complainant is a worldwide well-known investment fund manager, formerly named Fidelity International Limited. The Complainant has nearly 1,200,000 customers in the United Kingdom.

The Complainant owns various trademark registrations for the word mark FIDELITY, including the European Union Trade Mark FIDELITY with registration number 3844925, registered on September 21, 2005, for goods and services in classes 16 and 36, and the Bahrain trademark FIDELITY INTERNATIONAL with registration number 45943, registered on June 17, 2008,, for goods and services in class 36.

The aforementioned trademarks will hereinafter be referred to as the “EU Trademark” and the “Bahrain Trademark” respectively, and also together, in singular, as “the Trademark”.

The Complainant is the owner of various domain names that incorporate the Trademark, including <fidelity.co.uk> and <fidelityinternational.com>.

The Domain Name was registered on March 24, 2019. The Domain Name was resolving to a website allegedly offering investment information and/or services (the “Website”).

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name is confusingly similar to the Trademark. The Domain Name contains the substantial and distinctive element of the Trademark, namely “Fidelity”. The additional elements “capital” and “trade” are entirely descriptive.

The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. In addition, the Domain Name was being used in connection with attempted fraud or phishing activities.

The Domain Name was registered and has been used in bad faith. The Respondent was aware of the Trademark and registered the Domain Name with the intent to divert Internet users looking for the Complainant by creating a likelihood of confusion with the Trademark for the Respondent’s commercial gain. According to the Complainant, it is clear that the Respondent uses false contact information, which underlines that the Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and are being used in bad faith.

A. Preliminary Issue: Identity of the Respondent

As a preliminary issue the Panel notes that the identity of the Respondent is unclear.

Additionally, the Panel notes that the respondent is defined by the Rules as: “[…] the holder of a

domain-name registration against which a complaint is initiated” (see paragraph 1 of the Rules). In the present case, at the point when the Complaint was filed, the holder of the Domain Name, according to the WhoIs record, was a privacy service. Upon registrar verification, the underlying registrant of the Domain Name was identified as “Christa Brown”.

In these circumstances, “Christia Brown” would typically be regarded as the Respondent in this administrative proceeding. However, although the actual registrant of the Domain Name seems to be “Christia Brown”, the beneficial holder of the Domain Name seems to be “Fidelity Capital Trade”.

The Panel notes that it retains discretion to determine the respondent against which the case should proceed (see section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Accordingly, both parties will collectively be referred to and treated as the “Respondent” in this matter.

B. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.

The Complainant has shown that it has rights in the Trademark.

As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “fidelity”, “capital” and “trade”. The element “fidelity” is identical to the EU Trademark and similar to the Bahrain Trademark. The elements “capital” and “trade” are solely descriptive terms. The Panel finds that the EU Trademark is included in its entirety in the Domain Name and that the elements “capital” and “trade” do not prevent a finding of confusing similarity.

In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

C. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Fidelity Capital Trade” is the Respondent’s actual name or that the Respondent is commonly known as “Fidelity Capital Trade”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the following indicates that the Respondent is using the Domain Name in connection with fraudulent activities:

i) the Respondent has depicted a false license number of the Financial Conduct Authority in the United Kingdom on the Website;
ii) the Respondent has identically copied the text on the Website from a website owned by the Complainant;
iii) the Respondent has depicted false contact information on the Website;
iv) the Respondent has provided false contact information to the Registrar;

v) the Respondent has used “placeholder text” on the Website.

Therefore, the Panel is sufficiently convinced that the Domain Name is used in connection with fraudulent activities. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access / hacking, impersonation / passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0).

It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.

Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no Response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Therefore the Panel is satisfied that the second element of the Policy is met.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the Domain Name has been both registered and used in bad faith by the Respondent.

In light of the extensive evidence filed by the Complainant, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.

Based on the facts of the matter, as also considered under 6.C of this decision, several unrebutted circumstances indicate that the intention behind the registration and use of the Domain Name seems to be to create the false impression that the Domain Name is affiliated with the Complainant (paragraph 4(b)(iv) of the Policy).

In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant.

Furthermore, the Panel finds that the Respondent has intentionally attempted to attract users to its Website by creating a likelihood of confusion with the Trademark.

Finally, although the lack of a Response by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 Domain Name <fidelitycapitaltrade.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: October 23, 2019