FMR Corp. v. Infomax Ltd.
Claim
Number: FA0504000464613
Complainant is FMR Corp. (“Complainant”), represented
by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Infomax, Ltd. (“Respondent”), 80
Raffles Place, #16-20 UOB Plaza 2, Singapore 048624, SG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fidelty.com>, registered with Fabulous.com
Pty Ltd.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 20, 2005.
On
April 19, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <fidelty.com> is registered
with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the
name. Fabulous.com Pty Ltd. has
verified that Respondent is bound by the Fabulous.com Pty Ltd. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@fidelty.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
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 makes the following assertions:
1. Respondent’s <fidelty.com>
domain name is confusingly similar to Complainant’s FIDELITY.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <fidelty.com> domain name.
3. Respondent registered and used the <fidelty.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, FMR
Corp., is the parent company of the affiliated group of businesses known as
Fidelity Investments. Complainant
provides various financial services under various FIDELITY marks.
Complainant has
registered the FIDELITY.COM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,469,578 issued July 17, 2001).
Respondent
registered the <fidelty.com> domain name on May 19, 2002. Respondent’s domain name resolves to a
website that features links to competing financial services websites.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the FIDELITY.COM mark through registration of the mark
with the USPTO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <fidelty.com> domain name is confusingly
similar to Complainant’s FIDELITY.COM mark as the domain name incorporates
Complainant’s mark and merely deletes the letter “i” from Complainant’s
mark. Such a minor change is
insufficient to negate the confusing similarity between Respondent’s domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dow
Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change
respondent’s infringement on a core trademark held by the complainant); see
also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the
domain name <compq.com> is confusingly similar to the complainant’s
COMPAQ mark because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response, the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <fidelty.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the confusingly similar <fidelty.com> domain name to operate
a website that features links to competing financial services websites. Such competing use is not a use in
connection with 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). See Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a
bona fide offering of goods or services); see also Winmark Corp. v. In The
Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent
had no rights or legitimate interests in a domain name that used the complainant’s
mark to redirect Internet users to a competitor’s website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring any
variation of Complainant’s FIDELITY.COM mark.
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the <fidelty.com> domain name pursuant to
Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) “to require a showing that one has been commonly known by the domain
name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Moreover, the
fact that Respondent’s <fidelty.com> domain name is merely a typosquatted
variation of Complainant’s FIDELITY.COM mark is evidence that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and
<ltdcommodaties.com> disputed domain names were typosquatted
versions of the complainant's LTD COMMODITIES mark and "Respondent's
'typosquatting' is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <fidelty.com> domain name to operate
a website that features links to competing financial services websites. The Panel finds that such use constitutes
disruption and is evidence that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing financial services websites.
Because Respondent’s <fidelty.com> domain name is
confusingly similar to Complainant’s FIDELITY.COM mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus,
Respondent’s commercial use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the Complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
Furthermore,
Respondent registered the <fidelty.com> domain name with actual or
constructive knowledge of Complainant’s rights in the FIDELITY.COM mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent
registered the domain name with actual knowledge of the mark due to the obvious
connection between the content advertised on Respondent’s website and
Complainant’s business. Registration of
a domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge the mark holder’s rights is tantamount to bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the complainant’s mark when it
registered the subject domain name”).
Additionally,
the fact that Respondent’s <fidelty.com> domain name is merely a
typosquatted variation of Complainant’s FIDELITY.COM mark is evidence that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT
marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very
practice of typosquatting, in which Respondent has engaged, has been deemed
behavior in bad faith."); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)").
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <fidelty.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 31, 2005
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