WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Timoty Mark, Havey Capitals

Case No. D2021-2553

1. The Parties

The Complainant is FIL Limited, Bermuda, United Kingdom (“UK”), represented by Maucher Jenkins, UK.

The Respondent is Timoty Mark, Havey Capitals, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <fidelity-assetltd.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2021, 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 August 13, 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 August 13, 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 August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 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 an investment fund manager and asset management company, which was founded over 50 years ago and either itself or through its subsidiaries, offers a full range of financial investment and asset management services throughout the world to private and corporate investors. The Complainant has nearly 1,200,000 customers in the UK and is responsible for looking after assets worth over GBP 149.3 billion.

The Complainant is the registered proprietor of inter alia the following trade mark Registrations (hereafter the “Trade Marks”):

- European Union Trade Mark no. 3844925 for FIDELITY registered on September 21, 2005;
- European Union Trade Mark no. 3844727 for FIDELITY INVESTMENTS registered on September 1, 2005;
- UK registration no. 903844925 for FIDELITY registered on September 21, 2005.

The Domain Name was registered on October 27, 2020.

On February 11, 2021 the UK’s Financial Conduct Authority (FCA) issued a warning about an entity linked to the Domain Name, Fidel Asset Limited, on the basis that it is a clone of a UK registered company. The FCA warning confirms that the email address and website associated with this entity are “[...]@fidelity‑assetltd.com” and “www.fidelity-assetltd.com”, respectively. The warning goes on to state that this firm is (a) not authorised by the FCA, (b) is targeting people in the UK, and (c) that scammers are falsely claiming that it is linked to the UK registered company, Fidel Limited.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name is confusingly similar to the Trade Marks as the distinctive element “FIDELITY” of the Trade Marks is clearly recognizable within the Domain Name. The Complainant submits that the additional elements “asset” and “ltd”, are descriptive of the type of financial service offered by the Complainant, namely asset management services, and/or merely indicate that the Respondent is a limited company. The Complainant adds that the domain name suffix “.com” is non-distinctive and its presence does not diminish the confusing similarity of the Domain Name and the Trade Marks.

The Complainant contends that, taking the reputation of the Trade Marks into account, 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 Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, as it has not authorised or permitted the Respondent to use the Trade Marks and the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant adds that the Domain Name does not currently point to any active website, so that the Respondent is not using the Domain Names or a name corresponding to it in connection with a bona fide offering of goods or services, nor is the Respondent making any legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Trade Marks.

The Complainant states that the Domain Name is being used in connection with a fraud or phishing activity as evidenced by the warning from the UK’s FCA issued on February 11, 2021. The Complainant also points out that the contact details provided by the Respondent to the Registrar appear to be incorrect, since there does not appear to be an entity named Havey Capitals located in Salt Lake City, while a Google search for the Respondent’s address did not find the street name in Salt Lake City.

According to the Complainant, taking the reputation of the Complainant and its activities in the UK into account, it is inconceivable that the Respondent, an entity purportedly engaged in the same industry as the Complainant, would not have known of the Complainant or its Trade Marks before it registered the Domain Name. The Complainant submits that it is clear from the Respondent’s website that it 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 Trade Marks for the Respondent’s improper gain.

In addition, the Complainant contends, the FCA warning demonstrates that the Respondent is falsely claiming that it is linked to the UK registered company, Fidel Limited, and has registered and used the Domain Name with the intent to divert Internet users looking for Fidel Limited by creating a likelihood of confusion with Fidel Limited for the Respondent’s commercial gain. Moreover, the Complainant points out that the Respondent has provided false contact details to the Registrar which it contends is a further indicator of bad faith.

The Complainant concludes these circumstances show that the Respondent registered and has used the Domain Name in bad faith, in particular to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade 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

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates FIDELITY, of which the Trade Marks consist in its entirety. The addition of the descriptive terms “asset” and “ltd” does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. When the Panel checked the Domain Name on the Internet, it did not resolve to a website. However, according to the warning issued on February 11, 2021 by the UK’s FCA the email address “[...]@fidelity-assetltd.com” and the website under “www.fidelity-assetltd.com” are linked to a company called Fidel Asset Limited which is (a) not authorised by the FCA, (b) is targeting people in the UK, and (c) that scammers are falsely claiming that it is linked to the UK registered company, Fidel Limited. Indeed, when the Panel consulted the Internet archive (“www.waybackmachine.org”) it contained a capture of the website under “www.fidelity-assetltd.com” dated January 25, 2021 of a company called Fidel Limited, advertising itself as “The Most Prestigious Crypto Business Consulting Firm”. Therefore, there is no prima facie evidence of a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since

- the Respondent’s registration of the Domain Name occurred sixteen years after the registration of the earliest of the Trade Marks;

- the Trade Marks have a widespread reputation, as has been established by panels in previous UDRP cases (see FIL Limited v Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1093 and FIL Limited v Domain Admin, Privacy Protect, LLC, / John Hope, Hope Ltd. WIPO Case No. D2019-1340) and evidenced by its worldwide presence and its registration of the Trade Marks throughout the world;

- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.

With regard to bad faith use the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:

- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;

- the submission of apparently false contact details to the Registrar;

- the lack of a formal Response of the Respondent;

- the UK’s FCA warning that the email address “[...]@fidelity-assetltd.com” and the website under “www.fidelity-assetltd.com” are linked to a company called Fidel Asset Limited which is (a) not authorised by the FCA, (b) is targeting people in the UK, and (c) that scammers are falsely claiming that it is linked to the UK registered company, Fidel Limited.

Therefore, the Panel concludes that the Domain Name has been 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 disputed domain name <fidelity-assetltd.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: October 14, 2021