WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Alexander Smith

Case No. D2020-0227

1. The Parties

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

The Respondent is Alexander Smith, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <fidelityfinances.org> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2020, 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. The Center sent an email communication to the Complainant on February 13, 2020, 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 February 18, 2020.

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 February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2020.

The Center appointed Jon Lang as the sole panelist in this matter on March 30, 2020. 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

Founded over 40 years ago, 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 on February 1, 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 under the brand name “Fidelity” and marks including FIDELITY (the “FIDELITY Marks”), including in the United Kingdom, where the Respondent claims to be based (according to its website), and the United States of America (“United States”), China, and Germany where the Respondent claims to have offices.

The Complainant has nearly 1.2 million customers in the United Kingdom alone and is responsible for looking after assets worth over GBP 149.3 billion. It is the United Kingdom’s largest ISA provider and has typically been in the top 10 for mutual fund providers in recent years. The Complainant invests substantially in advertising and promoting its services under the FIDELITY Marks.

The Complainant and its subsidiaries and related companies have for many years used numerous FIDELITY-composite domain names to link to websites promoting services provided under the FIDELITY Marks including, for instance, <fidelityinternational.com> and <fidelityinvestments.com>.

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”. One of FMR’s subsidiaries, Fidelity Digital Assets, offers cryptocurrency trading for institutional customers, which is similar to the cryptocurrency services purportedly offered by the Respondent.

The Complainant is the registered proprietor of a number of trademark registrations for the FIDELITY Marks, all of which pre-date registration of the Domain Name on October 26, 2019, including European Union registration no. 3844925 for FIDELITY, registered on September 21, 2005, and European Union registration no. 3844727 for FIDELITY INVESTMENTS, registered on September 1, 2005.

The Complainant filed an earlier complaint under the UDRP on August 6, 2019 (FIL Limited v. Adam Crawford, WIPO Case No. D2019-1904) in respect of the domain name <fidelityfinances.net> (the “.net complaint”) which resolved to a website almost identical to the website to which the Domain Name resolves (the “Respondent’s Website”) and which advertised the services of a company with the same name as the Respondent (“Fidelity Finance, Inc.”) and with offices at the same address as the Respondent. Although the name and address provided to the registrar for the .net complaint was different to the name and address provided to the Registrar for the Domain Name, it was noted in the .net complaint that the address did not appear to exist. The earlier .net complaint was upheld.

Nothing much is known of the Respondent given that he has not participated in these proceedings, but given the similarity of websites as described above, the Complainant concludes that the entity or individual responsible for the domain name of the .net complaint is also the entity or individual responsible for the Domain Name.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the main contentions of the Complainant.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Through their substantial business and investment in the promotion of the FIDELITY Marks, the Complainant and its subsidiaries and related companies have acquired a very considerable reputation and goodwill in the FIDELITY Marks in relation to financial services internationally, including in the United Kingdom.

The Domain Name is confusingly similar to the FIDELITY Marks. The only distinctive element within the Domain Name is the word “fidelity”, which is clearly recognisable within the Domain Name and which is either identical to the Complainant’s FIDELITY Marks or to the main distinctive element within them. The additional element in the Domain Name, “finances”, is entirety descriptive of the Complainant’s activities and does not serve to distinguish the Domain Name from the FIDELITY Marks. The “.org” (generic Top-Level Domain (“gTLD”)) is non-distinctive and does nothing to diminish the confusing similarity.

The average consumer encountering the Domain Name is likely to assume that it links to a website that is that of, or is in some way connected to the Complainant.

Given the reputation of the FIDELITY Marks and the fact that that reputation is in relation to a wide range of financial services, the Domain Name is likely to be understood as denoting a website of the Complainant or of a business that is in some way affiliated with the Complainant or with its subsidiaries or related companies.

The Respondent has no rights or legitimate interests in respect of the Domain Name

The Complainant has not authorized or permitted the Respondent to use its FIDELITY Marks, and the Respondent is not sponsored by or associated with the Complainant in any way. The Respondent is not using the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services or making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s FIDELITY Marks.

The Complainant believes that the address provided to the Registrar in the present Complaint is false (just as it was in the .net complaint) and that the email address on the Respondent’s website ([...]@fidelityfinance.org) does not exist.

Given the almost identical nature of the content and presentation of the website linked to the .net complaint and the Respondent’s website, it is fair to conclude that the entity or individual responsible for the domain name of the .net complaint is also the entity or individual which is responsible for the Domain Name. Indeed, the Domain Name was registered just some 15 days following the decision in the .net complaint.

The Respondent has no rights or legitimate interests in the Domain Name and registering the same has sought to circumvent the decision in the .net Complaint so as to continue, the Complainant asserts, fraudulent and phishing activity. The Complainant relies on the following: that there is no indication that a company in the name of the Respondent exists, there is no English company registered under the name of the Respondent at the Respondent’s address and a Google search of the Respondent only produces the Respondent’s website or the Complainant’s own websites. Moreover, the Respondent alleges to have been established since 1994, and claims to have offices in four countries and be involved in more than 500 transactions worth over USD 50 billion. If any of this were true, the Complainant asserts, it is almost certain that a Google search would produce more than just the Respondent’s website, which was only registered in October 2019.

In the .net complaint it was noted by the Complainant that the website linked to the domain name of the .net complaint displayed a certificate of registration allegedly for Fidelity Finances, Inc. in Australia and a license alleging that it was registered with the Financial Conduct Authority (the “FCA”) in the United Kingdom. However, evidence was provided in the .net complaint to show that the certificate of registration was false and had been fraudulently produced, and that there was no entity in the name of Fidelity Finances registered with the FCA. Both the certificate and the FCA license are absent from the Respondent’s website.

The address provided by the Respondent to the Registrar, “[ … ] Ridegway, London, SW1A 1AA”, does not appear to exist, the postcode provided, SW1A 1AA being the postcode for Buckingham Palace.

Further, the Domain Name being registered only in October 2019, is at odds with the claim made on the Respondent’s website that it has been trading since 1994. This may however have something to do with the fact that the content and layout of the Respondent’s website is almost identical to the content and layout of a website hosted at <eastsidefinance.net>. East Side Finance Inc was incorporated in the United States state of Georgia in 1994 and its domain name was registered in 2018, i.e., before registration of the Domain Name and creation of the Respondent’s website. The Respondent appears to have plagiarized the content of East Side Finance’s website in an attempt to look legitimate. The only differences between the websites are that “East Side Finance Inc” has been replaced with “Fidelity Finance” throughout, and the individuals pictured under “our professional team” have been changed, as have company contact details.

Furthermore, the page entitled “our professional team” on the Respondent’s website contains a picture of the alleged CEO who is actually Chairman of an entirely different entity, clearly an attempt to make the Respondent’s website appear legitimate and indicative of fraudulent activity.

The use of the Domain Name in connection with attempted fraud or phishing activities is prima facie not bona fide commercial use nor legitimate noncommercial or fair use, since it is apparent that the Respondent intends to profit financially from misleading Internet users. The Respondent is attempting to masquerade as the Complainant to English-speaking consumers with the intention of luring them to its website for fraudulent purposes.

The Domain Name was registered and is being used in bad faith

The Domain Name was registered by the Respondent 15 days after the .net complaint decision was issued, the latter complaint establishing that the domain name in dispute had been registered in bad faith and with the intention of trying to mimic an authentic investments website. The Respondent’s website almost entirely reproduces the content of the website to which the domain name of the .net complaint resolved, in an attempt to circumvent the decision of the .net complaint and to try and continue fraudulent and phishing activities.

The Complainant and its FIDELITY Marks are widely known internationally, including in the United Kingdom, and its services provided under the FIDELITY Marks are widely publicized. The Complainant also actively maintains a United Kingdom website, “www.fidelity.co.uk”, which is directed at consumers in the same country as that in which the Respondent is believed to be based. The Respondent was fully aware of the Complainant and its business prior to registering the Domain Name. Given the reputation of the Complainant and the use of the FIDELITY mark by the Respondent in the Domain Name and on the Respondent’s website, it is in any event inconceivable that the Respondent, an entity purportedly engaged in the same industry as the Complainant, would not have known of the Complainant or its FIDELITY Marks before it registered the Domain Name. That knowledge, and a desire to profit from association with the Complainant, appear to have been what prompted the registration of the Domain Name.

The Respondent is targeting Complainant’s consumers worldwide, but notably in the European Union, including the United Kingdom and also in the United States, and it is clear from the Respondent’s website that it has again registered and used the Domain Name with the intent to divert Internet users looking for the Complainant by creating a likelihood of confusion with the Complainant’s FIDELITY Marks for its own illicit commercial gain.

Moreover, the provision of false contact information has been widely recognized by Panels as a relevant factor supporting a finding of bad faith.

In all the circumstances, it is clear that the Respondent has used the Domain Name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s FIDELITY Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove: (i) that a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in its FIDELITY Marks.

Ignoring the gTLD “.org” (as the Panel may do for comparison purposes), the Domain Name incorporates the FIDELITY mark but adds the word “finances” afterwards to create the Domain Name <fidelityfinances.org>.

Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms would not prevent a finding of confusing similarity.

The FIDELITY mark is clearly recognizable within the Domain Name. The addition of “finances” does not prevent the Domain Name from being confusingly similar to the FIDELITY mark.

The Panel finds that the Domain Name is confusingly similar to the FIDELITY mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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. Here, however, the Respondent is not known by the Domain Name and given the nature of the website to which the Domain Name resolves i.e., one that at best creates a misleading impression that it is in some way associated with the Complainant and, at worst, is designed to perpetrate a fraud on or wrongly obtain personal information from Internet users, it would be difficult to conclude, without a proper explanation from the Respondent, that there is anything legitimate or noncommercial or fair about the Respondent’s use.

As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s FIDELITY mark with the addition of a word “finances” describing the very nature of the business associated with the Complainant and its FIDELITY Marks (thus enhancing rather than reducing the risk of confusion), suggests the very opposite.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name, probably not for the first time, which would create a misleading impression of association with the Complainant which has then been used to resolve to a website that, for the reasons already described, could not be regarded as a bona fide offering of goods or services for the purposes of the Policy.

The Respondent has sought to create an impression of association with the Complainant for its own, no doubt improper, ends which it has chosen not to try and justify. That perhaps is not surprising given that it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name.

The Respondent’s website seeks to give the impression of a genuine business with weight and substance. If that impression were true, it is extremely unlikely that the Respondent would have allowed these proceedings to be undefended.

The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website (or other location) or of products or services on it. The facts of this Complaint mirror these circumstances and there is therefore little point in discussing other grounds upon which it would have been possible to make a finding of bad faith. It is clear, given the nature of the Domain Name and the use to which it has been put, that the Respondent was clearly aware of the Complainant’s FIDELITY Marks at the time of its registration and has sought, by its use, to create a misleading impression of association with the Complainant for its own ends.

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fidelityfinances.org> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: April 13, 2020