WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Phantom Tech
Case No. D2019-2359
1. The Parties
The Complainant is FIL Limited, Bermuda, represented by Maucher Jenkins, United Kingdom.
The Respondent is Phantom Tech, United Kingdom (“UK”).
2. The Domain Name and Registrar
The disputed domain name <fidelityfinanceinvestment.com> (the “Disputed Domain Name”) is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2019, 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 October 15, 2019 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 October 18, 2019. In response to a request for clarification by the Center, the Complainant filed a second amended Complaint on October 30, 2019.
The Center verified that the Complaint together with the amended Complaints 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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 3, 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 Complainant is a large and well-known investment fund manager based in Bermuda, which, either by itself or through its subsidiaries, offers a full range of financial investment services throughout the world to private and corporate investors. Founded over 40 years ago, the Complainant was formerly named and traded as Fidelity International Limited, but on February 1, 2008, the Complainant changed its name to FIL Limited. Throughout its existence, all of the Complainant’s investment services have been offered under the brand name “Fidelity”.
The financial services business carried on in the United States of America (“United States”) by the Complainant’s sister company, FMR LLC (“FMR”), is promoted on the website “www.fidelity.com”, which attracts a significant number of visitors from the United States. Although the Complainant does not offer cryptomining services of the type purportedly offered by the Respondent, one of FMR’s subsidiaries, Fidelity Digital Assets, announced its intention to offer crypto and blockchain services in 2018 and 2019.
The Complainant is the owner of numerous trademarks for FIDELITY, and is also the owner of trademarks and design marks incorporating the mark FIDELITY for a wide range of financial and related services, all of which pre-date the Respondent’s registration of the Disputed Domain Name. The Complainant’s trademarks include, but are not limited to: European Union Registration No. 3844925 for FIDELITY in International Classes 16 and 36, filed on May 21, 2004 and registered on September 21, 2005; European Union Registration No. 3844727 for FIDELITY INVESTMENTS in International Classes 16 and 36, filed on May 21, 2004 and registered on September 1, 2005; European Union Registration No. 12691432 for FIDELITY WORLDWIDE INVESTMENT in International Classes 35, 36 and 42, filed on March 13, 2014 and registered on July 23, 2014; European Union Registration No. 14770598 for FIDELITY INTERNATIONAL in International Classes 35 and 36, filed on November 5, 2015 and registered on March 22, 2016; and European Union Registration No. 4579009 for FIDELITY INTERNATIONAL in International Classes 16, 35 and 36, filed on August 4, 2005 and registered on July 7, 2006 (these trademarks are collectively referred to in this decision as the “FIDELITY trademark”).
For many years the Complainant, its subsidiaries and related companies have registered and used numerous domain names incorporating the word fidelity, including <fidelityinternational.com>, <fidelityinternational.co.uk>, <fidelityinvestment.com>, <fidelityinvestments.com>, <fidelity.co.uk> <fidelityinvestment.co.uk>, <fidelityworldwideinvestment.com>, and <fidelityinvestments.co.uk>. These domain names are linked to websites promoting the Complainant and its services.
The filed evidence establishes the Complainant has promoted its services very widely indeed and it is extremely well-known and widely recognised as an investment and funds management business.
The Respondent registered the Disputed Domain Name on July 30, 2019. At the time of this decision it does not resolve to an active website but the Complainant’s evidence establishes that it was previously linked to a website (the “Respondent’s Website”) which purports to promote a business described as “Fidelity Finance Investment” with a tagline of “the way to the future of cyrptocurrency”. The Respondent’s Website solicits investment and promises large financial returns.
5. Parties’ Contentions
The Complainant sets out its case in detail and cites numerous previous UDRP decisions. It is not necessary to repeat all of the detail of the Complainant’s case here. In summary it says as follows. The Complainant says that the Disputed Domain Name is confusingly similar to its FIDELITY trademark. It combines the FIDELITY trademark with the descriptive words “finance” and “investment” which both relate to the Complainant’s area of business.
The Complainant says that the Respondent has no rights or legitimate interests in the term “fidelity”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it is clearly fraudulent and is being used in connection with a “phishing” fraud. Its case in this respect includes the following:
a) No address is provided on the Respondent’s Website and the only contact details listed are an email address, [...]@fidelityfinanceinvestment.com, and a telephone number at the top of the homepage. No country code for the telephone number is provided and there are insufficient digits for it to correspond to a UK number. Therefore it is not possible to contact the Respondent via this number.
b) The contact details provided by the Respondent to the Registrar are false. There is no road in London with the name provided, whereas the postcode provided, relates to a street with a different name.
c) Internet searches suggest that the email address provided by the Respondent to the Registrar, to an individual based in Nigeria.
d) The social media links to Facebook, Twitter, Instagram and Pinterest, included at the top left and bottom right corners of the homepage of the Respondent’s Website, do not link to the relevant social media platforms, but simply link back to the Respondent’s Website.
e) No client testimonials are provided under the header “Client Testimonials”.
f) The two articles listed under the header “Check what happens inside our company” do not link to any content and produce an error message.
g) The Respondent purports to offers a range of cryptocurrency packages which promise consumers completely unrealistic returns of between 8% - 20% per week. The cost of these packages ranges between USD 200 to USD 10,000. The “Non Farm Payroll” package offers monthly returns of between 33% - 40%. Promises of unrealistic financial returns are well-known hallmarks of phishing sites.
h) The Respondent’s Website is in extremely poor English and contains various spelling and other errors and statements which you would not expect from a legitimate company offering services specifically to UK consumers. Poor grammar and spelling errors are well-known hallmarks of phishing site.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has rights in the FIDELITY trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark.
The Disputed Domain Name involves the combination of the FIDELITY trademark with the dictionary words “finance” and “investment”. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term to a domain name does not prevent a finding of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; and see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the Complainant has a substantial reputation in relation to the FIDELITY trademark which is extremely well known in relation to investment and funds management.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these applies in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the FIDELITY trademark. The Complainant has prior rights in the FIDELITY trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 the complainant who is the owner of the trademark or service mark or to a competitor of that 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The evidence filed by the Complainant establishes on a balance of probabilities that the Respondent has used the Disputed Domain Name in connection with a website which seems to be part of some form of dishonest and potentially fraudulent scheme either to attract investment by promising wholly unrealistic returns and/or seeking by “phishing” to acquire customer data dishonestly. The Respondent’s Website clearly seeks to attract customers by use of the well-known FIDELITY trademark in the Disputed Domain Name. Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b)(iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s FIDELITY trademark is part of a potentially fraudulent scheme intended to attract persons and then to fraudulently solicit investment and/or obtain their data presumably for financial advantage. That falls squarely within the type of circumstances to which the Policy refers. As such the Panel has no hesitation in concluding that the Disputed Domain Name has been registered and is being used in bad faith. It is well established that the establishment of a website which is associated with what appears to be fraudulent activity provides compelling evidence of bad faith registration and use of the associated domain name – see for example Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, Grupo Financiero Inbursa, S.A. de C.V v. inbuirsa, WIPO Case No. D2006-0614, Halifax Plc. v. Sontaja Sunducl, WIPO Case No. D2004-0237, CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251, Finter Bank Zurich v. N/A, Charles Osabor, WIPO Case No. D2005-0871, and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.
The Panel is further reinforced in this view by the fact that the name of the Respondent appears to be fictitious and its contact details are clearly false – see for example Salomon Smith Barney Inc v. Salomon Internet Services WIPO Case No. D2000-0668 (“The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details…”).
In addition the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <fidelityfinanceinvestment.com> be transferred to the Complainant.
Nick J. Gardner
Date: December 13, 2019