WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Mark Steven

Case No. D2021-3284

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Mark Steven, Nigeria.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2021. On October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 8, 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 October 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 October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on November 16, 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 large and well-known investment fund manager and asset management company. 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 and asset management services throughout the world to private and corporate investors. The Complainant has nearly 1,200,000 customers in the United Kingdom 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 is the owner of many trademark registrations, including European Union Trademark Registration No. 3844925 (registered on September 21, 2005) for the word trademark FIDELITY, European Union Trademark Registration No. 3844727 (registered on September 1, 2005) for the word trademark FIDELITY INVESTMENTS, and United Kingdom Trademark Registration No. 914770598 (registered on March 22, 2016) for the word trademark FIDELITY INTERNATIONAL (jointly and severally, the “FIDELITY trademarks”).

For many years the Complainant and its subsidiaries and related companies have used numerous domain names containing the FIDELITY trademarks to link to websites promoting services provided under the FIDELITY trademarks, including <fidelity.co.uk> (registered before August 1996), and <fidelityinternational.com> (registered in May 2001).

The disputed domain name was registered on June 2, 2021. The Complainant has provided screenshots, taken on September 29, 2021, showing that it resolved to a website offering a range of services relating to financial investments under the heading “IT’S TIME FOR SUCCESS WITH FIDELITYFINANCE.LTD”, followed by (in smaller capital letters) “WE HELP YOU TO GROW YOUR BITCOIN.” As of the date of this decision, the disputed domain name resolves to a website that appears to have the same content as that shown in the Complainant’s screenshots.

Although the website resolving from the disputed domain name is developed and gives the appearance of being the website of a substantial operation, it contains a number of falsities. On the “FAQ” page, there is the statement: “Yes, we are registered in the UK … Registration number [redacted]. You can check our company details online at the Companies House website.” However, the registration number provided is that of an unrelated entity. The website contains a download link to what purports to be a Certificate of Incorporation of a Private Limited Company. However, that document contains a company number that is not the same as the one referenced on the FAQ page, and is in fact the company number of another unrelated entity. The website also contains a download link to what purports to be a Certificate of Incorporation (again using the number of an unrelated company) of the “Securities and Exchange Commission … United Kingdom”. However, there is no such entity as the Securities and Exchange Commission in the United Kingdom.

5. Parties’ Contentions

A. Complainant

The Complainant made the following contentions to establish that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The only distinctive element within the disputed domain name is the word “fidelity”, which is clearly recognizable within the disputed domain name and which is identical to the Complainant’s FIDELITY trademarks or to the main element within them. The additional element in the disputed domain name is the word “finance”, which is non-distinctive and which reinforces the impression that there is a connection between the disputed domain name and the Complainant due to the Complainant’s substantial international business in the financial services sector. The generic Top-Level Domain (“gTLD”) “.ltd” is non-distinctive, given that it is likely to be understood as meaning “limited company”, and its presence does nothing to diminish the confusing similarity of the disputed domain name with the Complainant’s FIDELITY trademarks. Given the reputation of the FIDELITY trademarks and the Complainant’s established business in the United Kingdom, the disputed 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, its subsidiaries or its related companies.

The Complainant made the following contentions to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way, and the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s FIDELITY trademarks. The Respondent’s use of the disputed domain name in relation to Bitcoin investment services and crypto-currency trading suggests that the disputed domain name is being used in connection with an investment fraud, given that these services are frequently linked to fraudulent activities and to scams to obtain financial information from members of the public. The Respondent is fraudulently claiming to be an English company registered under a number that is actually linked to an unrelated English company, and has fraudulently created an English company certificate of incorporation, indicating that the Respondent is trying to conceal its true identity and does not appear to be a legitimate company. The Respondent purports to offer financial services but does not appear to be authorized by the United Kingdom’s Financial Conduct Authority to carry on business in financial services. The Respondent is making unauthorized use of the Complainant’s FIDELITY trademarks in a fraudulent attempt to lure consumers to its website under the false impression that they are dealing with the Complainant. Use of the disputed domain name in connection with fraud or phishing activities is prima facie not a bona fide commercial use or a legitimate non-commercial or fair use, since the Respondent intends to make illegitimate gains by misleading and defrauding Internet users through using the disputed domain name to masquerade as the Complainant.

The Complainant made the following contentions to establish that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered and has been used by the Respondent for the purposes of committing a financial scam. It is inconceivable that the Respondent, an entity purporting to be engaged within the same industry as the Complainant, would not have known of the Complainant or its FIDELITY trademarks before it registered the disputed domain name. Knowledge of the Complainant, and a desire to fraudulently profit from association with the Complainant, appears to have been the catalyst for registration of the disputed domain name. It is clear from the Respondent’s website that it registered and has used the disputed domain name to intentionally attract, for illegitimate gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s FIDELITY trademarks and the business carried out by the Complainant under them. The fraudulent use of incorrect company details strongly suggests that the Respondent is involved in a financial scam and is trying to hide its identity. The Respondent has fraudulently altered an official extract from UK Companies House to try to make Internet users believe that it is a legitimate business. The Respondent provides a link on the website resolving from the disputed domain name to a document purporting to confirm its certification status, however the certificate makes reference to a UK-based Securities and Exchange Commission, which does not exist. The Respondent has withheld its WhoIs contact details, most likely in order to hide its true identity and prevent the identification of those behind the fraud. It is clear that the Respondent registered and has used the disputed domain name for fraudulent purposes, and with the intention to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s FIDELITY trademarks.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of the whole of the Complainant’s registered word trademark FIDELITY followed by the word “finance” and the gTLD “ltd”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word “finance” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s FIDELITY trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its FIDELITY trademarks. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.

The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that purports to offer a range of services in the financial sector, which is the sector in which the Complainant operates. The website contains links to documents that purport to establish the bona fides of the business operation conducted by the Respondent, but which are fictitious and apparently fraudulent. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, the absence of any relationship between the Respondent and the Complainant, the fictitious and apparently fraudulent documentation at the website resolving from the disputed domain name, and the risk of implied false affiliation with the Complainant, the Respondent’s use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its FIDELITY trademarks. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademarks, given that the disputed domain name consists of the Complainant’s FIDELITY word trademark followed by the word “finances”, which relates to the Complainant’s services.

Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to resolve to a website that contains fictitious and apparently fraudulent documentation about the entity conducting business at the website. This is an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. It also appears to be an attempt to commit a financial scam.

Accordingly, the Panel finds that the disputed 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, <fidelityfinance.ltd>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: November 30, 2021