FMR LLC v. akpa innocent / jobs9ja
Claim Number: FA2102001930923
Complainant is FMR LLC (“Complainant”), represented by Patrick J. Concannon of Nutter McClennen & Fish LLP, Massachusetts, USA. Respondent is akpa innocent / jobs9ja (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trustedfidelityinvestment.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2021; the Forum received payment on February 4, 2021.
On February 4, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <trustedfidelityinvestment.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trustedfidelityinvestment.com. Also on February 5, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, FMR LLC, operates in the business of financial services, particularly investment services. Complainant has rights in the FIDELITY INVESTMENTS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,092,354, registered May 16, 2006). The disputed domain name is identical or confusingly similar to Complainant’s FIDELITY INVESTMENTS mark as it merely places the nondistinctive term “trusted” in front of the singular version of Complainant’s FIDELITY INVESTMENTS mark while adding the “.com.” generic top level domain (“gTLD”)
ii) Respondent lacks rights or legitimate interests in the disputed domain name as Complainant never authorized Respondent to use the FIDELITY INVESTMENTS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent attempts to pass off as Complainant. Furthermore, Respondent disrupts Complainant’s business by misdirecting customers away from Complainant’s legitimate website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent was involved in a prior UDRP case. Additionally, Respondent attempts to pass off as Complainant to intentionally attract Internet users to Respondent’s website for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights in the FIDELITY INVESTMENTS mark prior to registering the disputed domain name as Complainant has a large presence in the financial sector.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on December 14, 2020.
2. Complainant has established rights in the FIDELITY INVESTMENTS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,092,354, registered May 16, 2006).
3. The disputed domain name's resolving website displays the prominent wording TRUSTED FIDELITY INVESTMENTS in the banner of the web page.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the FIDELITY INVESTMENTS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,092,354, registered May 16, 2006). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration, the Panel finds Complainant has demonstrated rights in the FIDELITY INVESTMENTS mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s FIDELITY INVESTMENTS mark as it merely places the nondistinctive term “trusted” in front of the singular version of Complainant’s FIDELITY INVESTMENTS mark while adding the gTLD lettering “.com.” The addition of a generic or descriptive term and a gTLD to the singular form of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Complainant never authorized Respondent to use the FIDELITY INVESTMENTS mark. Lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Additionally, when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name lists the registrant as “akpa innocent / jobs9ja,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the FIDELITY INVESTMENTS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant for commercial gain. Using a confusingly similar domain name to pass off as a complainant for financial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s resolving website, highlighting the website includes the prominent wording TRUSTED FIDELITY INVESTMENTS in the banner of the web page in an illegitimate effort to pass Respondent off as Complainant and deceive consumers to think that the operator of the website associated with the domain name was Complainant or was affiliated with Complainant. As the Panel agrees, it finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent was involved in a prior UDRP case. A respondent’s prior history of registering confusingly similar domain names can evidence bad faith per Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Complainant argues that Forum found that the same respondent had registered and used the domain name <trustedfidelityinvestments.com> in bad faith where the facts were virtually identical to those set forth in this complaint. See FMR LLC v. akpa innocent, FA 2011001919282 (Forum Nov. 25, 2020). Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to pass off as Complainant for commercial gain. Using a confusingly similar domain name to pass off as a complainant for financial gain can evidence bad faith per Policy ¶ 4(b)(iv). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information). Complainant provides screenshots of Respondent’s resolving website, highlighting the website includes the prominent wording TRUSTED FIDELITY INVESTMENTS in the banner of the web page in an illegitimate effort to pass Respondent off as Complainant. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent had actual knowledge of Complainant’s rights in the FIDELITY INVESTMENTS mark prior to registering the disputed domain name as Complainant has a large presence in the financial sector. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues that the famous nature of the FIDELITY INVESTMENTS mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. Complainant provides a declaration which identifies Complainant as one of the world’s largest asset managers. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name, and thus it finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trustedfidelityinvestment.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 15, 2021
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