FIL Limited v. Magdy Mahmoud, Everest Medical Services
Claim Number: FA1406001564633
Complainant is FIL Limited (“Complainant”), represented by Angela Fox of RGC Jenkins & Co., United Kingdom. Respondent is Magdy Mahmoud, Everest Medical Services (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelityholdings.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2014; the National Arbitration Forum received a hard copy of the Complain on June 16, 2014.
On June 16, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fidelityholdings.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 17, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 7, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD 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 usTLD Policy, usTLD Rules, the National Arbitration 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
[13.] The Complainant is one of the largest and best-known investment fund managers in the world. It was formerly named and traded as Fidelity International Limited, but on February 1, 2008 changed its name to FIL Limited. The Complainant, either itself or through its subsidiaries, offers 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. Since the Complainant was founded over 40 years ago, all of these services have been offered under the brand name FIDELITY and marks including FIDELITY, including FIDELITY INTERNATIONAL, FIDELITY INVESTMENTS, FIDELITY WORLDWIDE INVESTMENT and numerous other sub-brands preceded by the core FIDELITY name (“the FIDELITY Marks”).
[14.] The Complainant has a United Kingdom subsidiary, FIL Investment Services (UK) Limited, an English company whose registered office is at Oakhill House, 130 Tonbridge Road, Hildenborough, Tonbridge, Kent TN11 9DZ, United Kingdom (“FIL Investment”), which is itself one of the largest investment fund managers in the United Kingdom. Since 1979, FIL Investment and its related companies and predecessors in business have traded in the field of financial services in the United Kingdom under the FIDELITY Marks.
[15.] Through their substantial business and investment in the promotion of FIDELITY 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. As at September 30, 2012, FIL Investment alone had over 660,000 customers in the United Kingdom and was responsible for looking after assets worth around US $232.8 billion. In the United States, the FIDELITY-branded business carried on by the Complainant’s sister company, FMR LLC, is one of the country’s largest mutual fund providers, the leading provider of workplace savings plans, and the top provider of individual retirement accounts (IRAs), with around US $3.4 trillion in assets under administration, including managed assets of US $1.5 trillion as of December 30, 2011.
[16.] For over 40 years, the Complainant and its subsidiaries and related companies 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 in 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 Investment. The Complainant does not as a rule keep copies of actual published advertisements because of the sheer volume involved.
[17.] For at least the last 12 years or so, the Complainant and its subsidiaries and related companies have placed banners and sponsored content on at least 35 different third-party financial and corporate websites targeting investors and financial advisors around the world, including widely consulted financial websites such as This is Money (www.thisismoney.co.uk), The Motley Fool (www.fool.co.uk), IFAOnline (www.ifaonline.co.uk), Citywire (www.citywire.co.uk), FT.com (www.ft.com), Timesonline (www.timesonline.co.uk), Investment Week (www.investmentweek.co.uk), Investors Chronicle (www.investorschronicle.co.uk) and Moneysupermarket (www.moneysupermarket.com). The Complainant and its subsidiaries and related companies have also invested in sponsored ads through the reservation of commonly searched investment terms such as “personal pensions” as keywords on search engines including Google, Yahoo and MSN, which result in links to advertisements for the services of the Complainant and its subsidiaries and related companies under the FIDELITY Marks being prominently displayed whenever the reserved terms are searched.
[18.] For at least the last 20 years the Complainant and its subsidiaries, including FIL Investment, have also promoted services provided under the FIDELITY Marks on the Internet website www.fidelity.co.uk. The Complainant and its subsidiaries, including FIL Investment, have invested regularly and substantially over the years in website optimisation to ensure maximum visibility of that website to Internet users searching for common investment terms. Based on visitor statistics for the www.fidelity.co.uk website from 2006, the Complainant estimates that it has at least a quarter of a million visitors to that website every month, and probably more.
[19.] The FIDELITY-branded financial services business carried on in the United States by the Complainant’s sister company, FMR LLC, is promoted on the website www.fidelity.com, which also attracts substantial numbers of visitors, as its status as a giant in the US financial services field would attest. FMR LLC is the proprietor of the domain name <fidelity.com>, registered on August 31, 1996 and in use for over 15 years in relation to the worldwide investment business carried on by FMR LLC and the Complainant under the FIDELITY mark.
[20.] The success and high profile of the Complainant and its subsidiaries and related companies under the FIDELITY Marks in the financial services field have given rise to numerous industry awards and praise and recognition from throughout the financial services industry.
[21.] 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, all of which pre-date registration of the Disputed Domain Name:
· Community Trademark registration no. 3844925 for FIDELITY in Classes 16 and 36, filed on 21 May 2004;
· United Kingdom registration no. 2100049 for FIDELITY in Class 36, filed on 13 May 1996;
· United Kingdom registration no. 1310766 for FIDELITY INVESTMENTS in Class 36, filed on 21 May 1987;
· Community Trademark registration no. 3844727 for FIDELITY INVESTMENTS in Classes 16 and 36, filed on 21 May 2004;
· United Kingdom registration no. 2100004 for FIDELITY INVESTMENTS Logo in Class 36, filed on 13 May 1996;
· United Kingdom registration no. 2351340 for FIDELITY INVESTMENTS Logo in Class 36, filed on 15 December 2003;
· Community Trademark registration no. 3845047 for FIDELITY INVESTMENTS Logo in Class 36, filed on 21 May 2004;
· United Kingdom registration no. 2554033 for FIDELITY INVESTMENT MANAGERS Logo [Series of Two] in Class 36, filed on 23 July 2010;
· United Kingdom registration no. 2583955 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo [Series of Two] in Class 36, filed on 8 June 2011;
· Community Trademark registration no. 9313065 for FIDELITY INVESTMENT MANAGERS Logo in Classes 35, 36 and 42, filed on 21 July 2010;
· Community Trademark registration no. 9313099 for FIDELITY INVESTMENT MANAGERS Logo [in Colour] in Classes 35, 36 and 42, filed on 21 July 2010;
· Community Trademark registration no. 10054377 for F in Square Device and FIDELITY WORLDWIDE INVESTMENT Logo in Classes 35, 36 and 42, filed on 16 June 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 16 June 2011;
· United Kingdom registration no. 2398490 for FIDELITY INTERNATIONAL in Class 36, filed on 3 August 2005;
· Community Trademark registration no. 4579009 for FIDELITY INTERNATIONAL in Classes 16, 35 and 36, filed on 4 August 2005;
· United Kingdom registration no. 2398491 for FIDELITY INTERNATIONAL Logo in Class 36, filed on 3 August 2005;
· Community Trademark registration no. 4579041 for FIDELITY INTERNATIONAL Logo in Classes 16, 35 and 36, filed on 4 August 2005; and
· Community Trademark registration no. 4579058 for FIDELITY INTERNATIONAL Logo [in Colour] in Classes 16, 35 and 36, filed on 4 August 2005.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: Rule 3(c)(ix). The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. Supplemental Rule 4(a).
[a.] [22.] The Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights. The first and only distinctive element within the Disputed Domain Name, the word “fidelity”, is identical to the Complainant’s trademark FIDELITY and similar to the remaining FIDELITY Marks, in which FIDELITY is the dominant distinctive element. The additional elements within the Disputed Domain Name are the descriptive word “holdings” and a non-distinctive hyphen which merely denotes the separation of word elements. The word “holdings” denotes a holding company and is therefore descriptive of a corporate status.
[23.] Taking the reputation of the FIDELITY Marks into account, the Disputed Domain Name is likely to be 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 (including, in particular, a holding company of the Complainant). The additional elements do not diminish the confusing similarity of the Disputed Domain Name with the Complainant’s FIDELITY Marks because they merely denote a corporate status.
Rule 3(c)(ix)(1); Policy ¶4(a)(i).
[b.] [24.] The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name, and is not using it 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 misleadingly to divert consumers or to tarnish the Complainant’s trademark.
[25.] The Disputed Domain Name links to a holding page for pay-per-click landing sites from which the Respondent is presumably deriving click-through income. The search topics on the sites relate to financial services, the field in which the Complainant trades, and when they are clicked they take the user through to third-party commercial websites of competing providers of financial services.
[26.] The only distinctive element of the Disputed Domain Name is the word FIDELITY, which is well-known as denoting the Complainant’s financial services. The attractiveness of the Disputed Domain Name as an address for a pay-per-click landing page is based on the inclusion of the Complainant’s distinctive FIDELITY trademark, and the use of the Disputed Domain Name to host pay-per-click links to competing financial services websites shows that the Respondent has sought to gain financially from the confusing similarity of the Disputed Domain Name with the FIDELITY trademark. Such activities do not amount to bona fide commercial use (see, inter alia, ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649, “linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. See also mVisible Technologies Inc, v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141, “If the links on a given landing page [...] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting”.)
[27.] The Disputed Domain Name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate non-commercial or fair use given the presence on the linked website of pay-per-click links to the Complainant’s competitors.
Rule 3(c)(ix)(2); Policy ¶4(a)(ii).
[c.] [28.] The Disputed Domain Name was registered and has been used in bad faith.
[29.] According to Paragraph 4(b) of the Policy, the Panel may consider any relevant aspects included in, but not limited to:
(i.) Whether there are circumstances indicating that Respondent has registered or has 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 Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii.) Whether 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; or
(iii.) Whether Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv. ) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.]
[30.] Paragraph 4(b) of the Policy expressly states, however, that the list of circumstances that shall be evidence of registration or use in bad faith is “without limitation” and is therefore not exhaustive (see analogously, eg Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 in which the panel noted, “The four circumstances exemplified in paragraphs 4(b)(i) - (iv) of the Policy are not exclusive and bad faith may be found alternatively.”).
[31.] It is implausible that the Respondent would not have been aware of the Complainant’s FIDELITY Marks at the time the Disputed Domain Name was registered, taking into account the very substantial and long-established worldwide use and reputation of the FIDELITY Marks, and the use of the Disputed Domain Name to provide pay-per-click links to websites offering financial services in competition with those of the Complainant. There is no plausible explanation for the Respondent’s registration of the Disputed Domain Name other than an intention to create a domain name that was and is inherently likely to lure Internet users looking for a website relating to the Complainant and its corporate group or in some way connected to the Complainant. There is no conceivable legitimate use to which the Respondent could put the Disputed Domain Name taking into account its inherently misleading nature.
[32.] By using a domain name that is confusingly similar to the Complainant’s FIDELITY Marks to profit from pay-per-click links to third-party financial service websites it is clear that the Respondent has intentionally set out to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant.
[33.] It will have been obvious to the Respondent that the Complainant would object to the use of the Disputed Domain Name, which is inherently misleading and is intrinsically likely to disrupt the Complainant’s business by diverting Internet traffic intended for the Complainant to the Respondent’s website. The Respondent might therefore have assumed that the Complainant would be prepared to pay a substantial sum for the transfer of such a domain name, and that, moreover, competitors of the Complainant might also be prepared to pay a substantial sum to acquire it for their own purposes.
[34.] The Respondent’s registration and use of the Disputed Domain Name therefore also reflects a deliberate intent to create a nuisance and to interfere with the Complainant’s business such that the Complainant or one of its competitors might be persuaded to pay valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name in order to secure its transfer, similar to the finding made in FIL Limited v Williams Murray, WIPO Case No. D2013-0508. There is therefore also evidence of bad faith registration and use under Paragraph 4(b)(i) of the Policy, or otherwise.
[35.] The Complainant’s representatives sent a demand letter to the Respondent on January 17, 2014 using the contact details given in the WHOIS record, to which no reply was received. The failure of the domain name holder to respond to the Complainant’s demand letter is a further indication that the Disputed Domain Name was registered and has been used in bad faith (see for example America Online, Inc. v. Antonio R. Diaz, WIPO Case No. 2000-1460 and America Online, Inc. v. Viper, WIPO Case No. D2000-1198).
Rule 3(c)(ix)(3); Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding, other than to suggest Respondent would “sell back” the domain name.
(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.
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 Complainant must prove the following three elements to obtain an order transferring or cancelling a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is one of the largest and best-known investment fund managers in the world. Complainant offers 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 etc. Complainant offers these services under the brand name FIDELITY as well as through its family of FIDELITY marks. Complainant registered its trademark with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 003,844,925 registered September 21, 2005) as well as with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,100,049 registered December 6, 1996). Providing evidence of a registration for a mark with a recognized trademark authority is normally sufficient to establish rights in that mark under Policy ¶4(a)(i). See Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). It does not matter where Complainant has rights; it is merely necessary for Complainant to have some rights somewhere, regardless of whether the respondent lives or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant need not establish superior rights to Respondent under Policy ¶4(a)(i). This Panel finds Complainant has rights in the FIDELITY mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <fidelityholdings.us> domain name is confusingly similar to Complainant’s FIDELITY mark. Respondent adds the term “holding,” which denotes a holding company. It is merely descriptive of a corporate status. This additional generic verbiage is not sufficient to adequately distinguish Complainant’s mark from Respondent’s domain name. Respondent also adds the country code top-level domain (“ccTLD”) “.us” to Complainant’s mark. Adding a TLD (whether a ccTLD or a gTLD) to a domain name is required by domain name syntax. Therefore, it must be disregarded in determining confusing similarity, lest the UDRP become eviscerated. In Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) the panel found that the ccTLD “.us” does not negate confusing similarity under Policy ¶4(a)(i). Also, in Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) the panel concluded that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business. This Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence in the record indicating Respondent owns any service marks or trademarks that reflect the <fidelityholdings.us> domain name. Therefore, this Panel finds Respondent does not have rights or legitimate interests pursuant to Policy ¶4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant claims Respondent has no rights or legitimate interests in the <fidelityholdings.us> domain name. Respondent is not commonly known by the disputed domain name as indicated by the WHOIS information. The WHOIS information for Respondent’s disputed domain name lists “Magdy Mahmoud” as registrant. This name bears no obvious relationship to the disputed domain name. Therefore, this Panel finds Respondent is not commonly known by the <fidelityholdings.us> domain name pursuant to Policy ¶4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent’s disputed domain name links to a holding page for pay-per-click landing sites, from which Respondent is believed to be deriving click-through income (or possibly just a free parking page). The links featured on the website take Internet users to third-party commercial websites competing with Complainant’s financial services. Links featured on the resolving website include, “Calculate An Annuity,” “Pension Fund Release,” “Emerging Markets Debt,” “Portfolio Management,” “Need a New Bank Account,” “UK Property Investment,” “Performance Bonds,” and “F and C Investment Trusts.” Previous panels have found websites providing links to complainant’s competitors do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel may find that this use of the disputed domain name does not constitute a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). This Panel agrees and finds Respondent is not using the <fidelityholdings.us> domain name for a bona fide offering of goods or services under Policy ¶4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶4(c)(iv) by causing the disputed domain name to resolve to a website featuring links promoting Complainant’s competitors.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <fidelityholdings.us> domain name in bad faith by offering it for sale. The resolving website displays a link saying “Would you like to buy this domain?” Attempting to sell a disputed domain name indicates bad faith use and registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”). This Panel finds bad faith registration and use under Policy ¶4(b)(i) for this reason.
Complainant claims Respondent’s disputed domain name is inherently misleading and is intrinsically likely to disrupt Complainant’s business by diverting Internet users to a website displaying content competing with Complainant. Registering domain names that are confusingly similar to Complainant’s marks for the purpose of linking to complainant’s competitors is bad faith registration and use under Policy ¶4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶4(b)(iii)). Respondent’s <fidelityholdings.us> domain name improperly disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent uses Complainant’s FIDELITY mark to financially profit from pay-per-click links to competing third-party financial service websites. Based on the similarity between the disputed domain name, Complainant’s mark, and the links displayed on the resolving website, this Panel concludes Respondent intentionally registered this particular domain name with the goal of creating a false association with Complainant. Respondent created such confusion in an attempt to achieve some sort of pecuniary gain at the expense of Complainant (otherwise, why would Respondent bother?). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <fidelityholdings.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 11, 2014
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