Fidelity
International Limited v. florida760
Claim Number:
FA0310000203903
PARTIES
Complainant
is Fidelity International Limited, Pembroke,
Bermuda (“Complainant”) represented by Victoria
Newbold, of Lovells, Atlantic
House, Holborn Viaduct, London, United Kingdom EC1A 2FG. Respondent is florida760 (“Respondent”), 76 Richardson Dr., Aurora, Ontario,
Canada L4G 1Z3.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <fidelity-international.biz>,
registered with Domain Bank, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Jacques A. Léger,,
Q.C., as Chair
Hon.
Carolyn M. Johnson, as Panelist
David
A. Einhorn, as Panelist
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 17, 2003; the Forum received a hard copy of the
Complaint on October 23, 2003.
On
October 24, 2003, Domain Bank, Inc. confirmed by e-mail to the Forum that the
domain name <fidelity-international.biz>
is registered with Domain Bank, Inc. and that the Respondent is the current
registrant of the name. Domain Bank,
Inc. has verified that Respondent is bound by the Domain Bank, Inc.
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
October 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 19, 2003 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@fidelity-international.biz by e-mail.
A
Response was received by fax on November 19, 2003.
On December 1, 2003, pursuant to Complainant’s request
to have the dispute decided by a three-member Panel, the Forum appointed Jacques A. Léger,, Q.C., as Chair,
Hon.
Carolyn M. Johnson, as Panelist and David A. Einhorn, as Panelist.
The time for rendering the decision was extended for the
purpose of clearing any potential conflict issues.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the leading
providers of financial services world-wide, offering investment management,
retirement and shareholder services to over 15 million clients and customers.
In May 2003 Complainant
discovered that Respondent had registered and was using the domain name <fidelity-international.biz>. Respondent, via that website, as
it appears from a screen grab dated May 2, 2003, purported to be able to
utilise “the vast resources of Fidelity Investments (the largest investment
company in the world).”
On June 3, 2003, Complainant,
through its parent company FMR Corp., sent a letter to Respondent pointing out
Complainant’s trademark rights in the FIDELITY and FIDELITY INVESTMENTS marks.
It requested certain written undertakings within seven days, including an
undertaking to disable the domain name <fidelity-international.biz> and an undertaking to co-operate
in the transfer of the domain name to Complainant.
Respondent did not comply with
this request. However, on June 5, 2003, Complainant received a letter from
Respondent acknowledging the “error” in its specific reference to Fidelity
Investments on its website and confirming that the reference
had been removed, as it appears
from a screen grab dated June 6, 2003. This
letter contained alternative contact details for Respondent.
Complainant holds the following
trademark registrations:
FIDELITY (Switzerland, Reg. No.
420543, registered on 14th
March, 1995, Class 36)
FIDELITY (U.K., Reg. No.
2100049, 13th May,
1996, Class 36)
FIDELITY (U.K., Reg. No 2179368,
12th October, 1998, Class 16)
FMR Corp. is the parent company
of the affiliated group of businesses operating in the United States and Canada
collectively known as Fidelity Investments. FMR Corp.’s subsidiaries have
various contractual arrangements with Complainant and its subsidiaries, to
provide sub-advisory services with respect to the Fidelity Investments mutual
funds and their foreign equivalents, as well as pension assets and other
institutional investment accounts. FMR Corp. is the owner of numerous trademark
registrations in the United States and Canada containing its famous FIDELITY
mark, including the following:
FIDELITY (United States, Reg.
No. 1,543,851, 13th June, 1989, Class 36)
FIDELITY
(United States, Reg. No. 2,108,052, 28th October, 1997, Class 16)
FIDELITY (Canada, Reg. No.
TMA429,663, 24th June, 1994, Class 36)
The
FIDELITY trademark has been used in the United States by Complainant and/or FMR
Corp. in connection with financial services since 1930 and has been in use in
both Europe and Canada since 1973. The FIDELITY trademark has also been used in
connection with online financial services since 1996. Complainant owns FIDELITY
trademarks in numerous countries world-wide, including in Switzerland.
Complainant has registered many
domain names incorporating the FIDELITY trademark, including, the <fidelityinternational.biz>, <fidelity-international.com>
and <fidelity.ch> domain registrations.
By virtue of the quality,
numerous years and widespread promotion of its services, the registered
FIDELITY mark is famous, well known to and well regarded by the consuming
public. It is distinctive of Complainant. The domain name <fidelity-international.biz> wholly incorporates the FIDELITY
trademark and is essentially identical to Complainant’s principal website
address <fidelity-international.com>.
Moreover, Respondent, at <fidelity-international.biz>, offers financial services. The website states that it “has been
created to address the needs of the informed investor who has the ability and
the resources to take advantage of individual investment opportunities as they
arise in the market” and presents “investment advice and opportunities”.
Respondent is using an identical mark to Complainant’s mark in respect of
identical or very similar services to those offered by Complainant under the
mark and in respect of which Complainant has registered trademark protection.
Confusion is inevitable given that Complainant has a pre-existing,
long-standing use of the FIDELITY mark in connection with financial services.
Respondent is not associated nor
connected with Complainant in any way.
Complainant has never authorized or otherwise permitted Respondent to
use any of its trademarks or to apply for or use any domain names incorporating
Complainant’s trademark.
Respondent has no need or
justification whatsoever to use the name FIDELITY within its domain name for
its financial services website. The word “fidelity” is not a term, which is
descriptive of financial services it is usually descriptive of faithfulness or loyalty,
especially with respect to a marriage/loving relationship.
As used by Respondent,
“fidelity” is clearly not being used in a descriptive manner but, rather, in a trademark
sense to identify its financial services website. However, the FIDELITY name is
distinctive of Complainant in relation to its financial services, including
online financial services offered through Complainant’s various websites which
use FIDELITY as the primary component of its domain names.
Registration and Use in Bad faith
i)
Registration
In FMR Corp. v Zuccarini, FA 113255 (Nat. Arb. Forum June 14, 2002),
it was found that the registration and use of a domain name identical and/or
confusingly similar to a complainant’s famous, registered trademark is in bad
faith where the domain name registrant had actual and constructive knowledge of
the complainant’s mark. A respondent will be deemed to have been on notice as
to the existence of a famous mark at the time of registration and a
respondent’s registration despite this deemed notice is evidence of bad faith.
Complainant’s trademarks are
well known world-wide and Respondent must have been aware of its reputation
when it registered the domain name. Furthermore, in the letter from Respondent
to Complainant dated June 5, 2003, Respondent acknowledges “the familiarity and
valuable goodwill” associated with Complainant’s trademarks. The letter goes on
to state that Respondent instituted a NUANS name search and attempted to ensure
its company logo “in no way resembled anything associated with” Complainant. It
seems that Respondent was fully aware of Complainant and its marks and
reputation prior to registering the domain
name.
Accordingly, Respondent’s
registration was in bad faith. By registering and using the domain name <fidelity-international.biz>, which is essentially identical
to Complainant’s <fidelity-international.com> domain name, Respondent has
intentionally attempted to attract for commercial and/or financial gain
Internet users endeavouring to reach the <fidelity-international.com>
website by creating a likelihood of confusion with Complainant’s trademark
as to the source, sponsorship, affiliation, or endorsement of Respondent’s
website.
ii)
Use
Respondent’s website originally
claimed it was able to utilise “the vast resources of Fidelity Investments (the
largest investment company in the world)”. This was an obvious attempt to
suggest that <fidelity-international.biz> is associated with, authorized
or endorsed by Complainant in some way and to utilise Complainant’s goodwill
and reputation. Subsequent to Complainant’s letter of June 3, 2003, Respondent
removed the reference from its website.
In its letter of June 5, 2003,
Respondent acknowledges that the statement infringed Complainant’s trademark
rights but claimed that the site was put up by Deaddog Studios who were unaware
of the infringement. Respondent also
claims that Deaddog Studios put the site on the net before Respondent had given
its final approval.
It seems highly implausible that
a reference to Fidelity Investments could have been made in error, not least
because the company that commissioned the <fidelity-international.biz> website is clearly not “the
largest investment company in the world”. This shows a definite intention to
refer to Complainant. It is, in fact, quite possible that Deaddog Studios were
under the mistaken impression that <fidelity-international.biz> was somehow connected to
Complainant.
B.
Respondent
In a
letter transmitted by fax and received by the Forum on November 19, 2003,
Respondent states that it cannot present a meaningful defence of its position
other than what has already been stated in its letters of response to
Complainant, dated June 5, July 8, and July 23, 2003. It also contends that it
does not have the financial and legal resources to pursue this matter.
Respondent
has therefore declared “No Contest”, and has stated that it will abide by
whatever decision the National Arbitration Forum declares.
In
addition, Respondent states that it has totally removed the site in dispute
from the Internet, and has no intention of reinstating it at any time or place,
now or in the future.
In a
letter dated June 5, 2003, Respondent acknowledges the size and scope of FMR
Corp. as well as the familiarity and valuable goodwill associated with the “FIDELITY and FIDELITY INVESTMENTS” names and trademark logos.
It
further affirms that when accessing “Fidelity Investments” or “Fidelity
International” on the Internet, of the thousands of sites that materialise, the
majority of which are a part of Complainant’s corporation and/or associated
companies, Respondent’s company does not appear. It is almost impossible to
imagine any element of “confusion, mistake and/or deception” arising among
consumers attempting to access “Fidelity Investments” or “Fidelity
International” and <fidelity-international.biz>,
which is what they must key in to be directed to Respondent’s website.
Furthermore,
there are 164,163 sites on the Internet using the “famous FIDELITY mark”, one of which is Respondent’s. When
Respondent incorporated its company in 2002, it instituted and paid for a NUANS
name search both in North America and Europe, specifically for the purpose of
avoiding any possibility of infringement on the rights and territory of any
other entity. The same was done when it began the implementation of its
website. As well, Respondent took pains to ensure its company logo in no way
resembled anything associated with Complainant or any other company.
Respondent,
however, acknowledges the error on the website of the specific reference made
in the second paragraph to Fidelity Investments. Deaddog Studios, a company
hired to create its website, was not aware of the infringement, and upon
receipt of Complainant’s correspondence, as well as notification from
Respondent, immediately rectified the situation. The website is only just in
the beginning stages of construction, and this initial introduction to the
company went on the net without final approval.
However,
as stated above, Respondent contends it has removed any information or
reference which could infer to the public that any association exists between
its company and Fidelity Investments. As well, in the nature of co-operation
and to show its goodwill, Respondent stated that it was willing to add a
disclaimer on its site as to any association to or with Complainant’s
organisation.
Respondent
goes on to say that Complainant has made some very serious allegations in its
correspondence, none of which are true or even realistic, since <fidelity-international.biz> is a
duly registered domain name.
However,
although the size and scope of Complainant’s company is impressive, it does not
entitle it to make demands or issue orders, especially when there was
absolutely no bad faith ever intended on Respondent’s part. Respondent has gone
to considerable expense and spent a substantial amount of time to ensure it did
nothing to encroach on the legal jurisdiction of any other enterprise.
And in
a letter dated July 23, 2003, Respondent further contends that .biz and .com
are two completely different “streets” in
“Cybercity” … and that therefore
there can be no confusion. In fact, it would be almost impossible to type .biz
instead of .com, which is what would have to happen to access Respondent’s
site. These domain names are as different as any two street addresses anywhere
in the world.
Respondent has no search engines or any other means
directing anyone to its site. One would have to specifically key in its address
to reach it.
Unfortunately,
the first presentation of the website contained inaccurate data which could
have led one to believe there was an association between Fidelity International
Development Inc. and Fidelity Investments. Immediately, upon it being brought
to Respondent’s attention, it was removed, and as well, to show “good faith”,
Respondent has removed “Fidelity International” from its logo.
Respondent’s website is intended to offer advice to
investors, and to act as a “watchdog” for the private investor. Respondent has
no intention or desire to solicit investments, and does not want to “ride on
the back of [the Complainant’s] good name”.
Respondent
contends that it chose the name “Fidelity” because of what the word means:
“Remaining firm in your beliefs, friendship, or loyalty to another person”. It
chose “International” for its global
implications. Neither word was chosen for its association with Complainant’s
enterprise.
Respondent
refused to immediately transfer the domain name, as it disagreed with
Complainant as a matter of law that Complainant had the right to force it to
give up <fidelity-international.biz>,
since the Uniform Dispute Resolution Policy (UDRP) clearly states that most
types of trademark-based domain-name disputes must be resolved by agreement,
court action or arbitration, before a Registrar will cancel, suspend or
transfer a domain name.
Finally,
considerable time, money and effort have been expended in establishing its
website. To give up everything and start over will be an unacceptable and
financially impossible task.
DISCUSSION & FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights;
(2)
the 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.
Preliminary Finding on the Admissibility of the Response
Respondent failed to submit an
electronic copy of its Response to the Forum.
Therefore, stricto sensu,
Respondent did not comply with ICANN Rule par. 5 which reads as follows:
«The Response
(a) Within
twenty (20) days of the date of commencement of the administrative proceeding the
Respondent shall submit a response to the Provider.
(b) The response shall be submitted in hard copy and (except to the
extent not available for annexes) in
electronic form …»
Furthermore, Respondent has failed to comply with ICANN Rule par. 5
(b)(viii) by not including language that certifies that all the information
contained in the Response was to the best of Respondent’s knowledge complete
and accurate.
While the Panel was under no obligation to accept the deficient Response,
the Panel nevertheless accepted it, considering it had been timely received by fax at the Forum on November 19,
2003, albeit not by e-mail as requested by the rules.
In addition, in the case at hand, the Panel is of the view that given the
fact that the Response was no more than the letters which had already been sent
to Complainant prior to the beginning of the proceedings, there was no need to
offer Complainant to respond to it.
Moreover, in the only document which had not already been sent to
Complainant, Respondent states that it believes that it could not present a meaningful
defense of its position other than what was stated in its letters to
Complainant. Therefore, Respondent
declares «No Contest» to the allegations of the Complaint and states that it
has removed the domain name from the Internet and has no intention of
reinstating the domain at any time or place, now or in the future.
All in all, the Panel accepts the Response as it has been sent, subject
of course to its substantive value. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002), wherein it was ruled that declaring a Response inadmissible because of
formal deficiencies would be an extreme remedy not consistent with the basic
principles of due process.
The Panel wishes to stress that it has carefully considered the Response
(although technically late) but ultimately it did not have any impact on the
merits.
The Panel is of the view that Complainant
has satisfactorily established rights in the FIDELITY mark through the mark’s
registration in the United Kingdom on May 13, 1996 and October 12, 1998 (Reg.
Nos. 2100049 and 2179368 respectively) and in Switzerland under Reg. No.
420543, registered March 14, 1995. The Panel adopts the findings in Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) wherein it was found that the Policy does not
require that the mark be registered in the country in which Respondent
operates. It is sufficient that
Complainant can demonstrate a mark in some jurisdiction.
Complainant has asserted that it has
either directly or through contractual agreements used the FIDELITY mark in
commerce since 1930 and has used the mark in both Europe and Canada since
1973. Complainant has gone at great
length about its parent company FMR Corp.’s registrations of the FIDELITY mark
in the United-States and Canada. However, the Panel finds that the chain of
title was not established and therefore, Complainant in this proceeding may not
rely on these registrations. It should be noted that this finding is of slight
consequence, as the Panel will further conduct its analysis based on the
FIDELITY mark, as it is registered by Complainant itself.
The Panel finds that the <fidelity-international.biz> domain
name is confusingly similar to the FIDELITY mark owned by Complainant because
the domain name fully incorporates the mark and merely adds the generic term
“international” and generic top-level domain “.biz” to the mark. The Panel
adopts the views expressed in Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) wherein confusing similarity
was found where the domain name in dispute contained the identical mark of
Complainant combined with a generic word or term, as well as in Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) wherein it was found that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar.
The Panel further finds that the domain
name is nearly identical to Complainant’s <fidelity-international.com>
domain name and will cause Internet user confusion because the website that the
disputed domain name resolves to offers financial services similar to those
offered by Complainant. On this particular matter, see Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) wherein it was found that the
domain name <mannbrothers.com> was confusingly similar to Complainant’s
MANN BROTHERS mark “so as to likely confuse Internet users who may believe they
are doing business with Complainant or with an entity whose services are
endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying
the confusing similarity requirement.”
While it could have been argued that the
mark is comprised of a generic word, therefore precluding Complainant to
enforce its trademark rights, the Panel is convinced that the mark FIDELITY has
acquired a secondary meaning enabling Complainant to rely on the mark.
As contented by Complainant, Respondent
was not authorized or licensed to register or use domain names that incorporate
the FIDELITY mark, and therefore Respondent lacks rights and legitimate interests
in the <fidelity-international.biz>
domain name.
Moreover, since the Panel finds that
Respondent is not commonly known by the <fidelity-international.biz>
domain name or the FIDELITY mark, the Panel concludes that Respondent lacks
rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000), wherein it was found that no rights or
legitimate interests existed where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question; see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) wherein it was found that no rights or
legitimate interest existed where Respondent was not commonly known by the mark
and never applied for a license or permission from Complainant to use the
trademarked name.
Furthermore, the Panel finds that
Respondent is using a misleading domain name that infringes upon Complainant’s
rights in the FIDELITY mark and such use is for commercial benefit, hence the
Panel finds that Respondent lacks rights and legitimate interests in the domain
name. The Panel relies on the findings in
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) wherein it was held that Respondent’s appropriation of Complainant’s mark
to market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services. See also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June
12, 2002) wherein it was found that Respondent’s use of the disputed domain
name to solicit pharmaceutical orders without a license or authorization from
Complainant does not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i)).
Moreover, as decided above, Complainant’s
FIDELITY mark, though comprised of a generic word, has acquired secondary
meaning and therefore Respondent’s allegations as to its rights and legitimate
interests in the <fidelity-international.biz>
domain name, because of the generic character of the word, cannot be taken
into account.
It is often quite difficult to actually show bad faith
with concrete evidence. While bad faith
cannot be presumed, once Complainant has presented some evidence pointing in
that direction, it is then incumbent upon Respondent to either respond or
explain why its conduct should not be assimilated to bad faith.
The Panel’s understanding of
the Policy is that although the initial burden to prove Respondent’s bad faith
in the registration or the use of the disputed domain name relies squarely on
the shoulders of Complainant and once it has done so, as it did in the present
case, it is then incumbent upon Respondent to either justify or explain its
business conduct (if not to demonstrate the contrary). Failure
to do so will, in some circumstances, enable the Panel to draw negative
inferences.
In the present case, the
Panel finds that, since Complainant’s trade mark FIDELITY is registered in many
countries, including Switzerland, it is very unlikely that when Respondent
registered the domain names, it was not aware that it was infringing on
Complainant’s trademark rights (see e.g. Expedia, Inc. v. European Travel Network, WIPO Case No.
D2000‑0137 and Telstra Corp. Ltd.
v. Nuclear Marshmallows, WIPO Case No. D2000‑0003). Indeed, the Panel
finds that Respondent registered the domain name in bad faith because Respondent
had actual or constructive knowledge of Complainant’s mark due to the mark’s
registration, the fact that the mark was used in commerce in several countries,
including Respondent’s country of residence and that the <fidelity-international.biz> website referred to Fidelity
Investments. On this particular matter, the Panel refers to Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) where it was stated that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”. See also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) wherein it was found that, in light of the
notoriety of Complainants' famous marks, Respondent had actual or constructive
knowledge of the BODY BY VICTORIA marks at the time she registered the disputed
domain name and such knowledge constituted bad faith.
Furthermore, the Panel is of
the opinion that the domain names are so obviously connected with Complainant’s
trademark that its very use by someone with no connection with Complainant
suggests “opportunistic bad faith” (see Parfums Christian Dior v.
Javier Garcia Quintas, WIPO Case No.
D2000‑0226 and Veuve Clicquot
Ponsardin, Maison Fondée en 1772 v.
Polygenix Group Co., WIPO Case No.
D2000‑0163.
Moreover, the Panel finds that the
evidence, as submitted by Complainant, tends to demonstrate that Respondent
registered the domain name with the purpose of intentionally attempting to
attract, for its own commercial benefit, Internet users to its website by
creating a likelihood of confusion with Complainant’s trademark and by using
the goodwill and positive reputation attached to Complainant’s FIDELITY
trademark. See Snapple Beverage Corp. v. Telmex Mgmt. Servs., WIPO Case No. D2002‑0114.
In fact, the Panel finds that Respondent registered and used the <fidelity-international.biz> domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) because Respondent is
attempting to commercially benefit via its misleading domain name by offering
financial services similar to those offered by Complainant. The Panel adopts
the views expressed in S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) wherein it was found that Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business. For illustrative purposes, see also Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb.
Forum Mar. 26, 2001) wherein bad faith was found where a competitor of
Complainant registered and used a domain name confusingly similar to
Complainant’s PENTHOUSE mark to host a pornographic web site.
The
Panel notes that Respondent stated in one of its letters that it conducted a
NUANS search in both North America and Europe to ensure that it was not
infringing upon anyone’s trademark rights by registering the domain name.
However, Respondent makes numerous admissions as to its prior knowledge of the
famous FIDELITY mark and such a declaration is highly incompatible with an
argument of good faith relying on a NUANS search. The Panel is not reasonably
convinced that this search, given all the surrounding circumstances, is
sufficient to establish Respondent’s good faith.
Lastly, the Panel cannot agree with
Respondent when it contends that the company that it hired to develop its
website, Deaddog Studios, mistakenly included a reference to Fidelity
Investments within the website and, as soon as it came to Respondent’s
attention, it was removed. The Panel finds that however much Respondent blames
its conduct on its agent, Respondent is bound by the inappropriate conduct in
registering a name using the protected mark of another, failing to show
development or use that is bona fide
and in acting in a manner about which bad faith can be alleged, since
Respondent has the duty to review and approve the contents of its own website.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <fidelity-international.biz>
domain name be TRANSFERRED from
Respondent to Complainant.
Jacques A. Léger,
Q.C., Chair
Dated: December 27, 2003
Hon. Carolyn M.
Johnson, Panelist
David A. Einhorn,
Panelist
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