WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FIL Limited v. Ashwani Hingorani, Advanced Business Computing, Inc / Perfect Privacy LLC

Case No. D2014-1005

1. The Parties

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

The Respondents are Ashwani Hingorani, Advanced Business Computing, Inc (First Respondent of Irvine, California, United States of America (“US”); Perfect Privacy LLC (Second Respondent) of Jacksonville, Florida, US.

2. The Domain Name and Registrar

The disputed domain name <fidelityfinances.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2014, 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 June 25, 2014 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 June 30, 2014.

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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 6, 2014.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 6, 2014. 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. It was formerly named and traded as Fidelity International Ltd, and on February 1, 2008 changed its name to FIL Limited. It states that it offers (either itself or through its subsidiaries) a full range of financial investment services throughout the world to private and corporate investors, including cash and equity, ISA options, investment funds, mutual funds, investment portfolio consolidation, consultancy and advice relating to investments, wealth management services for clients with larger investment portfolios, retirement savings, investment trusts and share dealing. The Complainant states that, since it was founded over 40 years ago, all of these services have been offered under the brand name FIDELITY and marks including FIDELITY (“Fidelity Marks”).

The Complainant has a UK subsidiary, FIL Investment Services (UK) Limited (FIL Investment), which is an investment fund manager in the UK. The Complainant states that since 1979, FIL Investment and its related companies and predecessors in business have traded in the field of financial services in the UK under the brand names FIDELITY, FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS and numerous other sub-brands preceded by the core FIDELITY name.

The Complainant states that, through the substantial business and investments in the promotion of the FIDELITY trademark and marks incorporating FIDELITY, the Complainant and 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.

The Complainant states that as of September 30, 2012, FIL Investment alone had over 660,000 customers in the UK and was responsible for looking after assets worth around USD232.8 billion. The Complainant states that in the United States, the FIDELITY branded business is carried on by the Complainant’s sister company, FMR LLC. This is one of the largest mutual fund providers in the US, is the leading provider of workplace savings plans, and the top provider of individual retirement accounts (IRAs), with around USD3.4 trillion in assets under administration, including managed assets of USD1.5 trillion as of December 30, 2011.

The Complainant states that for over 40 years, it and its subsidiaries have regularly and prominently advertised their services under the FIDELITY Marks in print media circulated around the world and the international financial services trade press, including inter alia The Times, The Sunday Times, The Financial Times, The Daily Mail, The Mail on Sunday, The Daily Telegraph, The Economist, Investment Week, Investment Advisor, Investment Trust, Money Observer and What Investments. The Complainant has provided evidence of actual copies of published advertisements in The Financial Times, The Times, The Daily Mail, The Sunday Times, The Daily Telegraph, The Mail on Sunday, Investment Trust, Money Observer and What Investment dating from between 2004 and 2009.

The Complainant states that for the last 12 years, it and its subsidiaries have placed banners and sponsored content on at least 35 different third-party financial and corporate websites targeting investors and financial advisers around the world, including numerous widely consulted financial websites. The Complainant and its subsidiaries have also invested in sponsored advertising through the reservation of commonly searched investment terms such as “personal pensions” as key words on search engines, including Google, Yahoo and MSN. This results in links to advertisements for the services of the Complainant and its subsidiaries under the FIDELITY Marks being prominently displayed whenever these reserved terms are searched.

The Complainant states that for at least the last 20 years it and its subsidiaries, including FIL Investment, have also promoted services under the FIDELITY Marks on the Internet website “www.fidelity.co.uk” which the Complainant has invested in regularly and substantially. The Complainant states that it estimates that it receives at least a quarter of a million visitors to the website every month and probably more.

The FIDELITY-branded financial services business carried on in the US by the Complainant’s sister company, FMR LLC, is promoted on the website “www.fidelity.com”. The Complainant states that this site also attracts a substantial number of visitors.

Evidence shows that the Complainant and its subsidiaries under the FIDELITY Marks in the financial services field have received a number of industry awards and recognition in the financial services industry, in multiple jurisdictions.

The Complainant is the registered proprietor of numerous trade mark registrations and applications for FIDELITY, and marks incorporating FIDELITY, in the UK and Europe in a range of classes for financial services and related services, all of which predate the registration of the disputed domain name, as follows:

- Community Trademark registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on May 21, 2004;

- United Kingdom registration no. 2100049 for FIDELITY in Class 36, filed on May 13, 1996;

- United Kingdom registration no. 1310766 for FIDELITY INVESTMENTS in Class 36, filed on May 21, 1987;

- Community Trademark registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on May 21, 2004;

- United Kingdom registration no. 2100004 for FIDELITY INVESTMENTS Logo in Class 36, filed on 13 May 13, 1996;

- United Kingdom registration no. 2351340 for FIDELITY INVESTMENTS Logo in Class 36, filed on December 15, 2003;

- Community Trademark registration no. 3845047 for FIDELITY INVESTMENTS Logo in Classes 16 and 36, filed on May 21, 2004;

- United Kingdom registration no. 2554033 for FIDELITY INVESTMENT MANAGERS Logo [Series of Two] in Class 36, filed on July 23, 2010;

- United Kingdom registration no. 2583955 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [Series of Two] in Class 36, filed on June 8, 2011;

- Community Trademark registration no. 9313065 for FIDELITY INVESTMENT MANAGERS Logo in Classes 35, 36 and 42, filed on July 21, 2010;

- Community Trademark registration no. 9313099 for FIDELITY INVESTMENT MANAGERS Logo [in Colour] in Classes 35, 36 and 42, filed on July 21, 2010;

- Community Trademark registration no. 10054377 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo in Classes 35, 36 and 42, filed on June 16, 2011;

- Community Trademark registration no. 10054393 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [in Colour] in Classes 35, 36 and 42, filed on June 16, 2011;

- United Kingdom registration no. 2398490 for FIDELITY INTERNATIONAL in Class 36, filed on August 3, 2005;

- Community Trademark registration no. 4579009 for FIDELITY INTERNATIONAL in Classes 16, 35 and 36, filed on August 4, 2005;

- United Kingdom registration no. 2398491 for FIDELITY INTERNATIONAL Logo in Class 36, filed on August 3, 2005;

- Community Trademark registration no. 4579041 for FIDELITY INTERNATIONAL Logo in Classes 16, 35 and 36, filed on August 4, 2005; and

- Community Trademark registration no. 4579058 for FIDELITY INTERNATIONAL Logo [in Colour] in Classes 16, 35 and 36, filed on August 4, 2005.

The disputed domain name <fidelityfinances.com> was created on September 18, 2013 (the “Relevant Date”). The identity of the First Respondent was concealed at the time of registration by a privacy proxy (namely the Second Respondent). The First Respondent’s actual identity was revealed to the Complainant as a consequence of this proceeding being brought.

Evidence indicates that, as at the date of the Complaint, the disputed domain name did not link to any website.

Prior to the lodging of this Complaint, there was some communication between the Complainant and Respondents.

On January 20, 2014 the Complainant’s attorneys wrote to the Second Respondent notifying it of the Complainant’s rights in the FIDELITY Marks and requesting the transfer of the disputed domain name to the Complainant voluntarily.

On February 5, 2014 the First Respondent wrote an email in reply as follows:

“I am in receipt of the domain transfer for the domain “fidelityfinances.com”, i am not opposed to transferring the domain to your client. I just request that i be compensated for the cost of reserving and any other costs associate to the domain. I will leave to you to find a fair amount that your client is willing to pay. Let me know so we can move forward with the transfer.” [sic]

On February 10, 2014 the Complainant’s solicitors replied (inter alia) as follows:

“We refer to your email of 5 February, below.

Our client may be willing to reimburse you your documented, out-of-pocket expenses associated with registering the domain name, but no more than that. Please provide us with evidence of those costs for consideration by our client.”

The Complainant states that no response to this letter was received.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

In respect of the first element of paragraph 4(a) of the Policy (confusingly similar to trade marks in which the Complainant has rights), the Complainant’s primary contentions are that:

(a) The distinctive element of the disputed domain name is the word “fidelity”, which is identical to the Complainant’s FIDELITY trademark and to the main distinctive element in the FIDELITY Marks, with the only additional element being the descriptive word “finances”.

(b) The word “finances” is directly descriptive of and relevant to the financial and investment services provided by the Complainant under the FIDELITY trademark and does not serve to distinguish the disputed domain name from the Complainant’s FIDELITY Mark. Rather, if anything, it serves to reinforce the idea of connection between the disputed domain name and the Complainant.

In respect of the second element of paragraph 4(a) of the Policy (no rights or legitimate interests in respect of the domain name), the Complainant’s contentions are that:

(a) The Respondents have no rights or legitimate interests in respect of the disputed domain name. The Respondents are not commonly known by the disputed domain name, and are not using it or a name corresponding to it in connection with bona fide offering of goods or services.

(b) Nor are the Respondents making any legitimate non-commercial fair use of the disputed domain name, without intent for commercial gain misleadingly to divert customers or to tarnish the Complainant’s trademark. The disputed domain name does not currently link to any website at all.

In respect of the third element of paragraph 4(a) of the Policy (registration and use in bad faith), the Complainant’s primary contentions are that:

(a) At the time the disputed domain name was registered, the Complainant’s FIDELITY Marks were internationally well-known in respect of the provision of financial services. It would be implausible to suggest that the Respondents were not aware of the Complainant’s FIDELITY Marks at that time, and indeed the Respondents do not deny such knowledge in the First Respondent’s email of February 5, 2014 responding to the demand letter sent by the Complainant’s representatives before the Complaint was filed.

(b) The disputed domain name is confusingly similar to the Complainant’s FIDELITY Marks and is inherently likely to attract Internet users looking for the Complainant. There is no plausible explanation for the Respondents’ registration of the disputed domain name other than an intention to create a domain name that was and is inherently likely to attract Internet users looking for a website relating to the Complainant and its corporate group.

(c) There is no conceivable legitimate use to which the Respondents could put the disputed domain name taking into account its inherently misleading nature.

(d) The Respondents are not actively using the disputed domain name. However, passive holding may still constitute use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy if, in the totality of the circumstances, it is clear that the Respondents’ act of passive holding is in bad faith.

(e) The Respondents’ failure to disclose their out of pocket registration costs and request that the Complainant should “make an offer” for the disputed domain name further indicate that the Respondents registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondents’ out-of-pocket registration costs.

B. Respondents

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(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 Respondents have 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the trademark FIDELITY as at the Relevant Date, including by way of its numerous registered trademarks in the UK and European Union set out above. Each of these registered trademarks well predates the Relevant Date. The Complainant’s trademark FIDELITY was also well-known for financial services as at the Relevant Date, including by way of use of the mark by the Complainant’s substantial businesses, the Complainant’s websites, print media with wide international circulation, and industry awards in multiple jurisdictions.

The Panel considers that the Complainant’s FIDELITY trademark is clearly recognizable within the disputed domain name and that the additional text “finances” does not sufficiently differentiate the disputed domain name from the Complainant’s trademark so that threshold confusion will not arise. Rather it serves to accentuate the likelihood of confusion by describing the Complainant’s core services.

The Panel accordingly finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondents used or made 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) that the Respondents have been commonly known by the disputed domain name, even if they had acquired no trademark or service mark rights; or

(iii) that the Respondents are making a legitimate non-commercial 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 overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

There is no evidence that any of the elements set out in paragraph 4(c) of the Policy are satisfied in the present case.

The Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name for the following reasons:

- the disputed domain name does not currently link to any website promoting or offering for sale any goods or services;

- the First Respondent stated in email correspondence to the Complainant’s attorneys that: “I am not opposed to transferring the domain to your client”;

- having received a detailed letter from the Complainant’s attorneys outlining the Complainant’s rights in the FIDELITY Marks in relation to financial services, the First Respondent raised no claim to rights in the disputed domain name in his reply email. Nor did he make any assertion of his own rights or legitimate interests.

Accordingly, and in the absence of any response to the Complaint from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondents have registered or have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that the Respondents have registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) that the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ 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 Respondents’ website or location or of a product or service on the Respondents’ website or location.

As already outlined, the Complainant has numerous trademark registrations in the UK and Europe for FIDELITY (or marks comprising FIDELITY) which well pre-date the Relevant Date.

Further, the Complainant has established that it was well-known as a financial services provider as of this date. The Panel finds that the Respondent must have been aware of the Complainant’s FIDELITY Marks at the time of registration of the disputed domain name. The inclusion of the word “finances” in the disputed domain name, which accurately describes the Complainant’s well-known services, is further evidence of this.

In circumstances where:

(a) the First Respondent did not dispute in his email of February 5, 2014 the Complainant’s rights to the mark FIDELITY¹ ;

(b) the Respondents have failed to respond to the Complaint (from which the Panel is entitled to draw adverse inferences).

The Panel is satisfied that the disputed domain name was registered in bad faith.

As to the second limb of the third element, the Panel is also satisfied that the disputed domain name is being used in bad faith. Although at the time of the Complaint, the disputed domain name resolved to a blank page, the First Respondent engaged by email with the Complainant concerning the transfer of the disputed domain name. When in receipt of the Complainant’s letter of demand, the First Respondent indicated that he “was not opposed to transferring the domain” to the Complainant, and requested that he “be compensated as to the cost of reserving and any other costs associate [sic] to the domain”. He then stated that he left it to the Complainant to “find a fair amount” that it was willing to pay.

Yet when the Complainant’s attorneys responded that it may be willing to reimburse documented out-of-pocket expenses associated with registering the disputed domain name, but no more, the First Respondent did not reply. If the First Respondent sought only his out-of-pocket costs, he ought to have specified these.

In the absence of a response by the Respondents, the Panel draws an inference from this communication that the Respondents registered the disputed domain name primarily for the purpose of transferring it to the Complainant (or a competitor) for valuable consideration and in excess of documented out-of-pocket costs directly related to the disputed domain names.

The Panel also draws adverse inferences from the Respondents’ failure to respond itself and from the fact that the Respondent used a proxy service to conceal its identity (Fifth Third Bancorp v. Secure Whois Info. Serve, WIPO Case No. D2006-0696).

The Panel therefore finds that both limbs of this third requirement have been satisfied on the facts.

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 <fidelityfinances.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: August 18, 2014

¹ These were extensively set out in the letter from the Complainant’s trademark attorneys dated January 20, 2014.