WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fil Limited v. Fidelity investments Review / Emanuela Van Tuli

Case No. D2019-2394

1. The Parties

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

The Respondent is Fidelity investments Review, Dos Santos / Emanuela Van Tuli, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <fidelityinvestmentsreview.com> 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 2, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 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 October 4, 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 October 8, 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 October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2019.

The Center appointed Luca Barbero as the sole panelist in this matter on November 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 is one of the largest and best-known investment fund managers in the world. Formerly known as Fidelity International Limited, since February 1st 2008, it changed its name to FIL Limited.

The Complainant has a sister company in the United States, FMR LLC, that trades as Fidelity Investments and has done so for many years.

The Complainant either itself or through its subsidiaries and affiliate companies, offers a full range of financial investment services worldwide 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.

Founded over 40 years ago, the Complainant has offered these services under the trademark FIDELITY and FIDELITY INVESTMENTS, investing substantially in advertising and promoting its services under the trademarks, both online and in United Kingdom and Europe trade magazines.

The Complainant has nearly 1,200,000 customers in the United Kingdom alone and is responsible for looking after assets worth over USD 418.9 billion from over 2.4 million clients across Asia Pacific, Europe, the Middle East and South America.

The Complainant is the owner of several trademark registrations for FIDELITY, including but not limited to the following, as per trademark certificates submitted as annexes to the Complaint:

- European Union trademark registration No. 3844925 for FIDELITY (word mark), registered on September 21, 2005 in classes 16 and 36;
- European Union trademark registration No. 3844727 for FIDELITY INVESTMENTS (word mark), registered on September 1, 2005 in classes 16 and 36;
- European Union trademark registration No. 12691432 for FIDELITY WORLDWIDE INVESTMENTS (word mark), registered on July 23, 2014 in classes 35, 36 and 42;
- European Union trademark registration N. 14770598 for FIDELITY INTERNATIONAL (word mark), registered on March 22, 2016 in classes 35 and 36;

The Complainant is also the owner of the domain name <fidelity.co.uk>, which was registered on August 1996and is used by the Complainant to promote its services under the trademark FIDELITY, as well as being the owner of other FIDELITY-composite domain names as shown below:

- <fidelityinvestment.com> registered on January 21, 1998;
- <fidelityinvestments.co.uk> registered on December 8, 1999;
- <fidelityinvestments.com> registered on May 16, 2000;
- <fidelityinternational.co.uk> registered on March 21, 2005;
- <fidelityinvestment.co.uk> registered on July 14, 2005;
- <fidelityworldwideinvestment.com> registered on May 12, 2011;
- <fidelityinternational.com> registered on May 31, 2011.

The Complainant’s sister company, FMR LLC instead, owns the domain name <fidelity.com>, registered on August 31, 1996.

The disputed domain name <fidelityinvestmentsreview.com> was registered on August 10, 2018 and is pointed to a website which displays news articles copied from third party websites which are mainly unrelated to the Complainant and its products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <fidelityinvestmentsreview.com> is confusingly similar to the trademark FIDELITY INVESTMENTS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “review” and the generic Top-Level Domain (gTLD) “.com”.

Moreover, the Complainant highlights that the distinctive words “fidelity investments” are clearly recognizable as the first words in the disputed domain name, whilst the generic non-distinctive term “review” is also descriptive of the Complainant’s activities, namely, to carry out financial reviews.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

- the Complainant never authorized or permitted the Respondent to use its trademrks and the Respondent is in no way sponsored or associated with the Complainant;
- the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name nor is it using the disputed domain name in connection with a bona fide offering of goods or services;
- the disputed domain name is being used in connection with a fraud or phishing activity;
- the Respondent’s website states that the Respondent is “a global, multi-platform media and entertainment company” founded in 2013. The disputed domain name however was registered on August 2018 and no indication of a company with that name exists. Moreover, there is no indication from the Respondent’s website that it provides any services, is involved in any activities, as the only content on its website are articles copied from third party websites;
- all links to social media accounts on the website link back to the Respondent’s webpage and not to the single accounts and in fact no social media accounts in the name of the Respondent appear to exist;
- the address provided on the website does not seem to exist either;
- the Respondent’s contact details to the Registrar also appear to be false as the house number does not exist.

For the reasons above, the Complainant concludes that the disputed domain name is being used to pass-off the Complainant to English-speaking consumers, taking advantage of the considerable reputation and goodwill of the Complainant.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the Complainant’s worldwide reputation and that that of its subsidiaries and affiliated companies, and the use by the Respondent of the trademark FIDELITY INVESTMENTS, it seems highly unlikely that the Respondent, which purportedly deals (amongst other things), with financial matters such as pensions, savings and investments, would not have known of the Complainant or its FIDELITY marks before it registered the disputed domain name.

The Complainant emphasizes that the Respondent seems to also be using the disputed domain name in connection with fraud or phishing activities which in itself is an indicator of bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademarks FIDELITY and FIDELITY INVESTMENTS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 11 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

Moreover, as found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark FIDELITY INVESTMENTS as it reproduces the trademark in its entirety with the addition of the descriptive term “reviews” and the gTLD “.com”, which do not prevent a finding of confusing similarity. Furthermore, the disputed domain name is also confusingly similar to the trademark FIDELITY, which is entirely encompassed in the disputed domain name with the addition of the two dictionary terms “investments” and “reviews”.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

It has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

In addition, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Emanuela Van Tuli, might be commonly known by the disputed domain name.

The Panel finds that the Respondent’s use of the disputed domain name in connection with the website currently online, displaying the heading “Fidelity Investments Reviews” and publishing articles unrelated to FIDELITY and FIDELITY INVESTMENTS trademarks and services and apparently taken from third-party websites does not amount to a bona fide offering of goods or services or in connection with a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

In view of the above and in the absence of a Response, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interest in the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademarks FIDELITY and FIDELITY INVESTMENTS since several years before the registration of the disputed domain name, the amount of advertising of the Complainant’s services and the Respondent’s combination of the trademark FIDELITY INVESTMENTS with the term “review”, which is descriptive of one of the activities carried on by the Complainant under its trademark (namely financial reviews), the Respondent’s registration of the disputed domain name cannot amount to a mere coincidence.

Indeed, also in light of the fact that the Respondent has not denied knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name the Panel finds that the Respondent obviously registered the disputed domain name with the Complainant’s trademark in mind.

Moreover, in view of the notoriety of the Complainant’s trademark in its sector, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

With reference to the use of the disputed domain name, as highlighted above, the Respondent has pointed it to a website which displays the heading “Fidelity Investments Reviews” and provides articles about general topics unrelated to the Complainant and its services and apparently taken from third-party website. The Panel also notes that the website provides no information about the entity operating the website and displays a contact form requesting users to fill it in with their names and email address to deliver a message to the website holder.

In view of the above and in absence of a Response, the Panel finds that, on balance of probabilities, the Respondent, by registering and using the disputed domain name, is intentionally attempting to attract, likely for commercial gain and/or to obtain users’ personal information, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website.

The Panel also finds that, in view of the circumstances of the case, the Respondent’s use of a privacy service to shield its contact information in the public WhoIs records, the provision of apparently inaccurate contact details and the absence of a Response are further elements which highlight the Respondent’s bad faith. See, along these lines, section 3.6 of WIPO Overview 3.0, “Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. In some cases, particularly where the respondent does not avail itself of the opportunity to respond to claims based on the timing of the registration of the Disputed Domain Name (such as a materially relevant change in underlying registrant), panels have been prepared to infer that the use of a privacy or proxy service may seek to mask the timing of the respondent’s acquisition of the domain name. Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) 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 disputed domain name <fidelityinvestmentsreview.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: December 11, 2019