WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fisher Asset Management LLC d/b/a Fisher Investments v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Kekek Pekek

Case No. D2021-1517

1. The Parties

The Complainant is Fisher Asset Management LLC d/b/a Fisher Investments, United States of America (“United States” or “US”), represented by the GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Kekek Pekek, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <fisherinvestments.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 19, 2021, 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 amendment to the Complaint on May 19, 2021, of receipt by Center.

The Center verified that the Complaint together with the amendment to 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.

The Center appointed Torsten Bettinger as the sole panelist in this matter on June 22, 2021. 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 an independent, fee-only investment adviser founded in 1979.

The Complainant holds several trademark registrations for FISHER INVESTMENTS for investment management and investment advisory services which include the US trademark registration of June 13, 2006 (No. 3,103,881).

The Complainant is the registrant of the domain name <fisherinvestments.com>, which was created on March 18, 1999, and which the Complainant uses in connection with its primary website.

The Respondent registered the disputed domain name on May 5, 2020, and has been using it in connection with a monetized parking page that contains links with such labels as “Fisher Investments”, “Portfolio Management”, and “Investment Management.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:

- the disputed domain name contains the FISHER INVESTMENTS trademark in its entirety;

- the generic Top-Level Domain (“gTLD”) “.site” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test;

- where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, it is apparent without the need for elaboration, that the disputed domain name is identical or confusingly similar to the trademark;

- the fact that the Complainant’s FISHER INVESTMENTS trademark contains a space between the two words while the disputed domain name does not is irrelevant; spaces cannot be reproduced in a domain name.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the FISHER INVESTMENTS trademark in any manner;

- by including commercial links for third-party websites on the websites associated with the disputed domain name – including links labeled “Fisher Investments”, “Portfolio Management”, and “Investment Management”, the Respondent has failed to create a bona fide offering of goods or services under the Policy;

- to the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name;

- given the Complainant’s registration of the FISHER INVESTMENTS trademark for more than 43 years and the Complainant’s trademark registrations in eight jurisdictions worldwide for the FISHER INVESTMENTS trademark, it is practically impossible that the Respondent is commonly known by this trademark;

- by using the disputed domain name in connection with a monetized parking page, the Respondent’s actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith;

- it is implausible that the Respondent was unaware of the Complainant when it registered the domain name given the fame of the FISHER INVESTMENTS Trademark;

- given the global reach and popularity of the Complainant’s services under the Complainant’s FISHER INVESTMENTS Trademark, as well as the disputed domain name’s similarity to Complainant’s own domain name <fisherinvestments.com> is inconceivable that the Respondent chose the contested domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business;

- Panels have repeatedly held that using a domain name in connection with a monetized parking page under the circumstances similar to those that are present here constitutes bad faith;

- bad faith exists even if the Respondent should argue that it was unaware of the monetized parking page associated with the disputed domain name, particularly with respect to “automatically” generated
pay-per-click links, as panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name;

- the Complainant’s trademark was registered 14 years before the Respondent’s registration of the disputed domain name;

- because the disputed domain name is “so obviously connected with” the Complainant, the Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

(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.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark FISHER INVESTMENTS prior to the registration of the disputed domain name on May 5, 2020.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name contains the FISHER INVESTMENTS trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark.”

(See also, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy).

Further, the fact that Complainant’s FISHER INVESTMENTS Trademark contains a space between the two words while the disputed domain name does not, is irrelevant as spaces “cannot be reproduced in a domain name” (Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027).

Finally, it is well accepted under the UDRP case law that the specific gTLD designation such as “.com”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (WIPO Overview 3.0, section 1.11).

For the foregoing reasons the Panel concludes that the disputed domain name is identical to the Complainant’s FISHER INVESTMENTS Trademark in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4 (c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are 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.”

The Complainant has asserted and presented evidence that the disputed domain name redirects Internet users to monetized parking page that contains links with such labels as “Fisher Investments”, “Portfolio Management”, and “Investment Management” and that it has not authorized the Respondent to register or use the disputed domain name.

These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

From the record in this case, it is evident that the Respondent was, and is, aware of the Complainant and its FISHER INVESTMENTS mark and does not have any rights or legitimate interests in the disputed domain name.

By including commercial links for third-party websites on the websites associated with the disputed domain name – including links labeled “Fisher Investments”, “Portfolio Management”, and “Investment Management”– the Respondent is unduly profiting from the Complainant’s goodwill by misleading Internet users to its website” and has therefore failed to create a bona fide offering of goods or services under the Policy.

Furthermore, as the Respondent’s use of the disputed domain name in connection with a monetized parking page, the Respondent’s actions are clearly commercial and therefore cannot be considered as a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.

In light of the circumstances of this case, including the level of reputation the Complainant has acquired in its FISHER INVESTMENTS mark in connection with investment management and investment advisory services, the Panel concludes that the selection of the disputed domain name incorporating the Complainant’s FISHER INVESTMENTS mark cannot be considered bona fide and that therefore the Respondent has no rights or legitimate interests in the disputed domain name as set forth by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant holds multiple trademark registrations for the mark FISHER INVESTMENTS in the United States and other countries that predate the registration of the disputed domain name.

Given the global reach and popularity of the Complainant’s investment management and investment advisory services under the FISHER INVESTMENTS Trademark, as well as the disputed domain name’s similarity to the Complainant’s own domain name <fisherinvestments.com> created on March 18, 1999, it is inconceivable that the Respondent chose the contested domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business.

The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

Based on the record in this proceeding it is also undisputed that the disputed domain name has been used by the Complainant for a monetized parking page that contains links with such labels as “Fisher Investments”, “Portfolio Management”, and “Investment Management.”

Panels have repeatedly held that using a domain name in connection with a monetized pay-per-click parking page (“PPC parking website”) under the circumstances present here constitutes bad faith.

The Panel in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753 put it best:

“By creating a PPC parking website that featured PPC links, the Respondent used the domain name in bad faith. The purpose of the Respondent’s PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainants and/or their website. Once on the Respondent’s page, some users likely click on advertisers’ links, which presumably would confer a commercial benefit on the Respondent. The fact that the Respondent was willing to pay money to register or acquire this domain name, to continue to maintain it, and to host the website, all are evidence that the Respondent expected to profit from the domain name in this way.”

This is what also occurs in the present case where there remains no doubt that it was the Respondent’s intention to profit from the goodwill associated with the FISHER INVESTMENTS mark by collecting click-through fees.

Accordingly, the Panel finds that the Complainant has also used the disputed domain name in bad faith and therefore satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 disputed domain name, <fisherinvestments.site> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: July 6, 2021