WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fidelity International Limited v Bryan Jeong, bksoft

Case No. D2019-0151

1. The Parties

The Complainant is Fidelity International Limited of Hamilton, Bermuda, represented by Maucher Jenkins, United Kingdom.

The Respondent is Bryan Jeong, bksoft, of Manila, Philippines.

2. The Domain Name and Registrar

The disputed domain name <fidelity-invest.net> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, 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 January 24, 2019, 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 January 28, 2019.

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 January 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.

The Center appointed Andrew J. Park as the sole panelist in this matter on February 25, 2019. 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, Fidelity International, formerly Fidelity Worldwide Investment, is a company that provides investment management services including mutual funds, pension management, and fund platforms to private and institutional investors. Fidelity International was originally established in 1969 under the name Fidelity International Limited (FIL) as the international investment subsidiary of Fidelity Management & Research in Boston before being spun out as an independent business in 1980. Since the Complainant was founded almost 50 years ago, it has been one of the largest and best-known investment fund managers in the world and offering its services under the FIDELITY and related marks worldwide. The Complainant, its subsidiaries, and related companies have acquired a very considerable reputation and goodwill in FIDELITY and FIDELITY-composite marks in relation to financial services internationally, including in the Republic of Korea. The Complainant has operated a website targeting Korean investors at “www.fidelity.co.kr”.

The Complainant has used numerous FIDELITY-composite domain names to link to websites promoting services provided under the FIDELITY mark, including:

The Complainant is the registered proprietor of inter alia the following trademark registrations and applications for FIDELITY and marks incorporating FIDELITY for a wide range of financial services and related services (collectively the “FIDELITY Marks”), all of which pre-date registration of the disputed domain name.

The disputed domain name <fidelity-invest.net> was registered by the Respondent on December 2, 2018, and resolved to a website impersonating the Complainant’s genuine website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <fidelity-invest.net> is identical and confusingly similar to the FIDELITY Marks, the Complainant’s trademarks 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. The additional elements in the disputed domain name are the descriptive word, “invest,” which refers to the Complainant’s activities, and a non-descriptive hyphen which merely denotes the separation of the word elements. These additional elements therefore do not serve to distinguish the disputed domain name from the Complainant’s FIDELITY Marks. Rather, if anything, they serve to reinforce the idea that there is a connection between the Complainant and the disputed domain name. The domain name suffix “.net” is non-distinctive and its presence does nothing to diminish the confusing similarity of the Complainant’s FIDELITY Marks and the disputed domain name.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant insists that the Complainant has not authorized or permitted the Respondent to use it FIDELITY Marks. The Respondent is not commonly known by the disputed domain name, and is not using the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

3) the disputed domain name was registered and is being used in bad faith. Taking the reputation of the FIDELITY Marks into account, the Respondent was clearly aware of the Complainant and the Complainant’s FIDELITY Marks when it registered the disputed domain name. The disputed domain name must have been 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 Respondent has been making this unauthorized use of the Complainant’s FIDELITY trademarks, including its logos at a website of the disputed domain name, in an attempt to masquerade as the Complainant to Korean-speaking investors right until it was recently taken down at the Complainant’s instigation. As a consequence, the average Internet consumers encountering the disputed domain name were likely to assume that they were directed to a website that was connected to the Complainant. This constitutes fraud and phishing activity with the intent to divert Internet users looking for the Complainant and to deceive them into divulging private information for the Respondent’s commercial gain. In all circumstances, it is clear that the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating the likelihood of confusion with the Complainant’s FIDELITY Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, which appears to have been used a phishing site capitalizing on the Complainant’s business in the Republic of Korea.

B. Respondent

The Respondent did not submit a formal response to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

A. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the FIDELITY Marks, namely, FIDELITY, FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS, and FIDELITY WORLDWIDE INVESTMENT, and that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the word “invest” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. The addition of the generic Top-Level Domain (“gTLD”) extension “.net” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Marks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

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

(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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 claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the disputed domain name to intentionally 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.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant handles investments for clients in Europe, Middle East, Africa, and Asia and that the Complainant’s registered trademark, FIDELITY, is widely known, and that it has been used for almost 50 years. Also the Complainant’s trademarks were all registered much before the Respondent registered the disputed domain name. The disputed domain name includes the Complainant’s trademark in its entirety with the addition of the term “invest”, which is descriptive of the Complainant’s activities, and the website of disputed domain name contained links to the Korean language website in which the Respondent made unauthorized use of the Complainant’s trademarks and its logo marks. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s Marks and its business.

Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto (particularly in view of the Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks in order to attract Internet users to its website for commercial gain.

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). Furthermore, the Panel notes that the Respondent registered another domain name, which is subject to another UDRP proceeding, Fidelity International Limited v. Bryan Jeong, bksoft, WIPO Case No. D2019-0192.

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-invest.net> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: March 13, 2019