WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Michal Restl c/o Dynadot Privacy

Case No. D2013-0369

1. The Parties

The Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by RGC Jenkins & Co., United Kingdom.

The Respondent is Michal Restl c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Name And Registrar

The disputed domain name <fieelity.com> (“the Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2013.

The Center appointed Warwick Smith as the sole panelist in this matter on April 10, 2013. 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.

In the absence of any response, the Panel has checked and is satisfied that the Complaint has been properly notified to the Respondent in accordance with the Rules.

4. Factual Background

The Complainant

The Complainant, formerly named Fidelity International Limited, is one of the world’s largest investment fund managers. A subsidiary of the Complainant has traded in the United Kingdom under the brand names “Fidelity”, “Fidelity International”, “Fidelity Investments”, and numerous other brands incorporating the word “Fidelity”. Its services have been promoted, inter alia, through a website at “www.fidelity.co.uk”.

The Fidelity-branded financial services have been carried on in the United States by a sister company of the Complainant, FMR LLC (“FMR”). FMR’s financial services, and those of the Complainant, have been promoted on the website “www.fidelity.com’’ (“the FMR website”) for approximately 15 years.

The Complainant is the registered proprietor of the word mark FIDELITY in the United Kingdom and in the European Union. The United Kingdom registration for FIDELITY, in international class 36, is based on an application filed on May 13, 1996. The Community trademark registration, in international classes 16and 36, is based on an application filed on May 21, 2004.

The Respondent and the Domain Name

The Domain Name was registered by the Respondent on October 20, 2012.

The Complainant produced a screenshot of the website at the Domain Name (“the Respondent’s website”) taken on February 22, 2013. The Respondent’s website then featured a picture of some coins lying on what appeared to be a diary or calendar. There were what appeared to be click-on “sponsored listings” links, but the Complainant says that the links were unresponsive. However, an earlier screenshot taken on January 28, 2013 contained numerous click-on links which were apparently then working, including a “Fidelity Bond Funds” link, and a “Get a Free .CO.UK Domain” link. The same background shots of coins lying on a diary or calendar were present on the Respondent’s website on January 28, 2013.

The “Fidelity Bond Funds” link was removed from the Respondent’s website before the Complainant attempted to access it. However, the Complainant produced a Google search showing that the Complainant group and its worldwide business were associated with all of the naturally occurring search results for the term “fidelity bond funds”.

The Complainant’s cease and desist letter

The Complainant’s representatives sent a cease and desist letter to the Respondent on January 28, 2013. The Complainant did not receive any reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusingly similar to the Complainant’s FIDELITY mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name. He is not commonly known by the Domain Name, and is not using the Domain Name in connection with any 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 to misleadingly divert consumers or to tarnish the Complainant’s mark. The Respondent made no reply to the Complainant’s cease and desist letter.

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

(i) The Respondent must have been aware of the Complainant’s FIDELITY marks when the Domain Name was registered, having regard to:

(a) The “Fidelity Bond Funds” link on the Respondent’s website;

(b) FMR’s use of the very similar domain name <fidelity.com> for over 15 years in relation to the investment services of FMR and the Complainant; and

(c) The Complainant’s own use of <fidelity.co.uk> for over 20 years.

(ii) There is no plausible reason for the Respondent to have chosen the Domain Name, other than an intention to create a website which would lure Internet users looking for a website relating to the Complainant and its corporate group.

(iii) The Respondent has operated a pay-per-click landing page using images of currency. He has intentionally set out to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant.

(iv) The Respondent has engaged in the practice of “typosquatting”.

(v) The Respondent’s failure to respond to the cease and desist letter is indicative of bad faith.

(vi) The Respondent’s use of an inherently misleading domain name is intrinsically likely to disrupt the Complainant’s business by diverting Internet traffic intended for the Complainant, to the Respondent’s website. The Respondent might therefore have presumed that the Complainant would be prepared to pay a substantial sum for the transfer of the Domain Name.

(vii) The Respondent’s registration and use of the Domain Name reflect a deliberate intention to create a nuisance and to interfere with the Complainant’s business, such that the Complainant or one of its competitors might be expected to pay valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name in order to secure its transfer. Those circumstances are evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. What the Complainant must prove under the Policy - General

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(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.

Paragraph 15(a) of the Rules requires the panel to:

“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.

B. Identical or Confusingly Similar

The Complainant has proved this part of the Complaint.

It is the registered proprietor of the word mark FIDELITY in the United Kingdom and in the European Union, and that mark differs by only one letter from the Domain Name (in which an “e” has been substituted for the letter “d”). Many Internet users would be likely to read the Domain Name as a mis-spelt version of the word “fidelity”. The “.com” suffix is not taken into account in the comparison which is required by paragraph 4(a)(i) of the Policy.

In those circumstances the Domain Name is clearly confusingly similar to the Complainant’s FIDELITY mark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows:

“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

In this case, the Domain Name is confusingly similar to the Complainant’s United Kingdom and European Union registered marks, and the Complainant has not authorized the Respondent to use its marks (or any confusingly similar variations thereof). There is nothing in the evidence to suggest that the Respondent, or any business or organization operated by him, might be “commonly known” by the Domain Name and thus able to rely on the defense provided at paragraph 4(c)(ii) of the Policy.¹ The Respondent’s very choice of a domain name which is different from the Complainant’s mark by only one letter, coupled with his use of the Domain Name to provide “sponsored links” advertising revenue, raises an obvious question as to whether this is a case of bad faith “typosquatting”.

The combination of circumstances just described sufficiently establishes a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name. The Respondent has failed to do that, so the Complainant’s prima facie proof must prevail.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or …

(iii) where 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 [the respondent’s] website or other on-line 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 Panel is also satisfied that the Complainant has proved this part of the Complaint.

In the absence of any contrary assertion from the Respondent, it is appropriate on the evidence to infer that when the Respondent registered the Domain Name he was aware of the group which carries on business worldwide in the field of investment funds management under the mark FIDELITY. The Domain Name was obviously intended to attract Internet users who might mistakenly key the word “fieelity” into their browsers (instead of “fidelity”), and the coins arranged over a diary or calendar on the Respondent’s website seem apt to evoke or symbolize the finance or investment sectors. On the evidence, the only party operating under the mark FIDELITY in those sectors is the group of which the Complainant is a member.

The diversity of some of the “Sponsored Listings” and “Related Searches” on the Respondent’s website (including for example: “Warcraft 3 Reign of Chaos” and “Get a Free .CO.UK Domain”), make it fairly clear that the Respondent’s website is no more than a landing page used for the purpose of deriving pay-per-click or other revenue from site visitors clicking on one or more of these links.

In the foregoing circumstances, the Panel is satisfied that the Complainant has proved circumstances falling within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FIDELITY mark, as to the source, sponsorship affiliation or endorsement of the Respondent’s website.

The Panel has not overlooked the possible argument that the Respondent was targeting FMR, rather than the United Kingdom-based member of the Fidelity group, and that FMR should have brought the present complaint. That argument might conceivably have been run, particularly having regard to the facts that the Respondent appears to be based in the United States where FMR carries on business, and the Complainant has not claimed ownership of any registered FIDELITY trademark in that country.

But the Respondent has elected not to respond, either to the cease and desist letter or to the Complaint itself, and the “Get a Free .CO.UK Domain” link on the Respondent’s website does suggest that the Respondent’s target market included the United Kingdom. The Panel also notes that webpages promoting the Complainant’s United Kingdom-based activities are accessible from the Complainant’s sister company FMR’s “www.fidelity.com” website. In all of those circumstances, the most likely scenario is that the Respondent was targeting the Fidelity investment funds management group generally, including the Complainant and the FIDELITY marks owned by it. That is sufficient to bring the circumstances within paragraph 4(b)(iv) 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 Domain Name <fieelity.com> be transferred to the Complainant.

Warwick Smith
Sole Panelist
Date: April 22, 2013

¹ A barely discernible copyright claim “©fieelity.com” on the February 22, 2013 screenshot of the Respondent’s website, without more, is insufficient to form a basis for the paragraph 4(c)(ii) defense: it appears to be no more than a repetition of the Domain Name.