WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIL Limited v. Stewart Lawton
Case No. D2021-2218
1. The Parties
The Complainant is FIL Limited, Bermuda, United Kingdom (“UK”), represented by Maucher Jenkins, UK.
The Respondent is Stewart Lawton, UK.
2. The Domain Name and Registrar
The disputed domain name, <fidelity-gb.com>, is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 July 20, 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 amended Complaint on July 23, 2021.
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 July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 30, 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 a company registered in Bermuda, UK. It is a provider of financial services worldwide under the name and trademark FIDELITY.
The Complainant is the owner of various registrations for the trademark FIDELITY including, for example, European Union Trade Mark number 3844925 for the word mark FIDELITY, registered on September 21, 2005 for goods and services including financial services in International Class 36.
The Complainant is the operator of websites located at URLs including “www.fidelityinternational.com” and “www.fidelityinternational.co.uk”. Its associated company in the United States of America operates a website at “www.fidelity.com”.
The disputed domain name was registered on October 22, 2020.
At the date of this Decision, the disputed domain name resolves to a website at “www.vkonkurs.ru” with content in the Russian language.
5. Parties’ Contentions
The Complainant submits that it has traded under the FIDELITY trademark for almost 50 years and that it is one of the world’s largest and best-known investment fund managers. It states that it has nearly 1.2 million UK customers and funds of over GBP 149.3 billion under management. It provides evidence of its promotional and advertising activities in printed news media, investment magazines and online.
The Complainant submits that the disputed domain name, <fidelity-gb.com> is confusingly similar to its FIDELITY trademark. It contends that the disputed domain name incorporates that trademark together with the term “gb”, which is a non-distinctive abbreviation generally used to refer to Great Britain and does not prevent the disputed domain name from being confusingly similar to its trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its FIDELITY trademark and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent has used the disputed domain name for the purpose of an investment fraud as described further below.
The Complainant submits that the disputed domain name was registered and has been used in bad faith.
The Complainant submits that in December 2020 the disputed domain name appeared to resolve to the Complainant’s own website at “www.fidelity.co.uk”. The Complainant states that it did not retain images of the website at that time, because it did not realize until early 2021 that the website in question was not in fact its own, but instead a “cloned”, mirror-image, copy of its website which was being used as an instrument of fraud. The Complainant submits that cloned websites of this nature are commonly used to deceive Internet users, to obtain personal and financial data and fraudulently to extract payments from those Internet users.
The Complainant submits that it is obvious from the fame of the Complainant’s FIDELITY mark, and the Respondent’s use of the disputed domain name to link to a “cloned” copy of the Complainant’s own website, that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name.
The Complainant submits that from early 2021 onwards, the disputed domain name resolved to a website ostensibly offering hair-care products, and subsequently to a Russian language website at “www.vkonkurs.ru”, which related to online raffles. The Complainant exhibits copies of web pages evidencing that latter use. The Complainant contends that these redirections of the disputed domain name constitute no more than an attempt by the Respondent to mask its earlier fraudulent activities and that the later websites neither relate to the disputed domain name nor appear to evidence any actual business carried on by the Respondent.
The Complainant submits, in particular, that the Complainant has used the disputed domain name with the Intention of attracting Internet users to its website for fraudulent purposes by creating a likelihood of confusion with the Complainant’s FIDELITY trademark.
The Complainant adds that the Respondent has provided what appear to be false contact details. In particular, the Respondent’s address is given as “13 Bond Street, London BG” which the Complainant submits is not a genuine postal address. Further the Respondent has provided Hong Kong, China telephone and fax numbers while claiming to be located in the UK.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations for the mark FIDELITY. The disputed domain name wholly incorporates that mark together with the addition of a hyphen and the term “gb” which does not prevent a finding of confusing similarity with that mark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has not disputed the Complainant’s contention that the disputed domain name was used in late 2020 to link to a website which constituted a “cloned” copy of the Complainant’s own website. Such use represents an impersonation of the Complainant and is in itself an indication of bad faith. The Panel further accepts that the disputed domain name has subsequently been used to resolve to websites which have no apparent link to the disputed domain name or to the Respondent. In the circumstances, the Panel concludes that the Respondent registered and has used the disputed domain name with the intention of misleading Internet users into believing that its website was in fact that of the Complainant for the purpose of dishonest gain. In particular, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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, <fidelity-gb.com>, be transferred to the Complainant.
Steven A. Maier
Date: September 9, 2021