WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fidelity International Limited v Bryan Jeong, Bksoft

Case No. D2019-0192

1. The Parties

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

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

2. The Domain Name and Registrar

The disputed domain names <fidelity-stock.com> and <fidelity-stock.net> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 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 February 1, 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 February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2019.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 8, 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 names <fidelity-stock.com> and <fidelity-stock.net> were registered by the Respondent on December 26, 2018, and resolved to websites impersonating the Complainant’s genuine website according to the Complainant’s allegation. The disputed domain names currently do not resolve to any active websites.

5. Parties’ Contentions

A. Complainant

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

1) the disputed domain names <fidelity-stock.com> and <fidelity-stock.net> are 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 names is the word “fidelity,” which is clearly recognizable within the disputed domain names. The additional elements in the disputed domain names are the descriptive word, “stock,” 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 names 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 names since it obviously is a word that is related to the Complainant’s business. The domain name suffixes “.com” and “.net” are non-distinctive and their presence does nothing to diminish the confusing similarity of the Complainant’s FIDELITY Marks and the disputed domain names.

2) the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant insists that the Complainant has not authorized or permitted the Respondent to use its FIDELITY Marks. The Respondent is not commonly known by the disputed domain names, and is not using the disputed 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 disputed domain names, without intent for commercial gain and misleadingly diverting consumers or tarnishing the Complainant’s trademarks.

3) the disputed domain names were registered and have been 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 names. The disputed domain names must have been understood as denoting websites 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 websites linked to the disputed domain names, in an attempt to masquerade as the Complainant to Korean-speaking investors right until they were recently taken down at the Complainant’s request via CSC on December 28, 2018. As a consequence, the average Internet consumers encountering the disputed domain names were likely to assume that they were directed to websites that were 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 names to intentionally attract Internet users to its websites by creating the likelihood of confusion with the Complainant’s FIDELITY Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites, which appear to have been used as phishing sites 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 names to the Complainant. Those requirements are: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have 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. Preliminary Issue: Consolidation of Cases

On February 1, 2019, the Complainant submitted a consolidation request in view of the Respondent being the same in both cases WIPO Case No. D2019-0192 and WIPO Case No. D2019-0151. In accordance with paragraph 10(e) of the Rules and 4(f) of the Policy, the Panel has to address the consolidation request. In this case, noting that the Complainant’s consolidation request was submitted on February 1, 2019, after the notification of the Complaint in WIPO Case No. D2019-0151 on January 30, 2019, the Panel has decided not to accept the consolidation request (where it would have been necessary to amend the Complaint and renotify the Complaint to the Respondent) to expedite the procedure and to render two UDRP decisions.

B. 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 names are 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 names are confusingly similar to the Complainant’s trademarks. The disputed domain names incorporate the Complainant’s trademark FIDELITY in its entirety, and adding the word “stock” does nothing to avoid a finding of confusing similarity to the Complainant’s trademarks. The addition of the generic Top-Level Domain (“gTLD”) extension “.com” and “.net” may be disregarded when assessing whether the disputed domain names are 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 names are confusingly similar to the Complainant’s Marks.

C. 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 names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain names. 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 names or has been commonly known by the disputed domain names. Also, there is no evidence that the Respondent has an intention to use the disputed domain names 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 names.

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

D. 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 names 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 names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites.

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 names.

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 names. The disputed domain names include the Complainant’s trademark in its entirety with the addition of the term “stock,” which is descriptive of the Complainant’s business activities, and according to the Complainant’s assertion that has not been rebutted by the Respondent, the websites of the disputed domain names contained links to the Korean language websites 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 names, 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 names 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 Complainant’s claim, 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 names and the Complainant’s trademarks in order to attract Internet users to its websites for commercial gain. The Complainant noted also that the websites liked to the disputed domain names had been taken down, and passive holding of these disputed domain names does not prevent a finding of bad faith use.

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 names 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. D2019-0151.

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 names <fidelity-stock.com> and <fidelity-stock.net> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: March 22, 2019