FMR LLC v. fidelity prime / fidelity
Claim Number: FA1912001874559
Complainant is FMR LLC (“Complainant”), represented by Patrick J. Concannon of Nutter, McClennen & Fish, LLP, United States. Respondent is fidelity prime / fidelity (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelityprimeinvestment.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2019; the Forum received payment on December 10, 2019.
On December 11, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <fidelityprimeinvestment.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 December 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2019 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@fidelityprimeinvestment.com. Also on December 11, 2019, 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 January 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, FMR, LLC, provides a wide range of financial services, particularly investment services, to its clients. Complainant has rights in the FIDELITY INVESTMENTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,092,354 registered on May 16, 2006).
2. Respondent’s <fidelityprimeinvestment.com>[i] domain name is identical and/or confusingly similar to Complainant’s FIDELITY INVESTMENTS mark is it includes the mark in its entirety, removing an “s” and adding the generic word “prime” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <fidelityprimeinvestment.com> domain name. Respondent is not authorized or licensed to use Complainant’s FIDELITY INVESTMENTS mark and is not commonly known by the domain name.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a page which uses Complainant’s mark and attempts to create confusion as to the source, sponsorship, affiliation, or endorsement of the webpage.
5. Respondent registered and uses the <fidelityprimeinvestment.com> domain name in bad faith. Respondent attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the <fidelityprimeinvestment.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FIDELITY INVESTMENTS mark. Respondent’s domain name is confusingly similar to Complainant’s FIDELITY INVESTMENTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <fidelityprimeinvestment.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the FIDELITY INVESTMENTS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Complainant has provided copies of its registration of the FIDELITY INVESTMENTS mark with the USPTO (e.g. Reg. No. 3,092,354 registered on May 16, 2006). Accordingly, Complainant has established rights in the FIDELITY INVESTMENTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fidelityprimeinvestment.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the FIDELITY INVESTMENTS mark in its entirety, removing the “s,” and adding the generic word “prime” and the “.com” gTLD. Removal of a letter, with the addition of a generic word and gTLD does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Bare Escentuals Beauty, Inc. v. PPA Media Services / Ryan G Foo, FA 1572597 (Forum Sept. 30, 2014) (establishing a confusing similarity between the <baremineral.com> domain name and the BARE MINERALS trademark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the <fidelityprimeinvestment.com> domain name is confusingly similar to the FIDELITY INVESTMENTS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <fidelityprimeinvestment.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <fidelityprimeinvestment.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the domain name and Respondent is not a licensee or authorized to use Complainant’s FIDELITY INVESTMENTS mark. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Where a respondent registers a domain name similar to the mark of a complainant, it may still be determined that the respondent lacks rights or legitimate interest in the domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the <fidelityprimeinvestment.com> domain name lists the registrant as “fidelity prime / fidelity.” However, Respondent provides no affirmative evidence in support of this identity and there is no other evidence to suggest that Respondent was authorized to use the FIDELITY INVESTMENTS mark. Therefore, the Panel holds that Respondent is not commonly known by the <fidelityprimeinvestment.com> domain name per ¶ 4(c)(ii).
Complainant argues Respondent fails to use the <fidelityprimeinvestment.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to create a likelihood of confusion with respect to its affiliation with Complainant. A respondent’s use of a domain incorporating the mark of another to divert Internet users to a respondent’s website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s resolving website which would confuse Internet users into believing Respondent is affiliated with Complainant, as the webpage incorporates Complainant’s mark. Therefore, Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <fidelityprimeinvestment.com> domain name in bad faith. Specifically, Respondent registered and uses the domain name to confuse Internet users in regard to affiliation with Complainant. A respondent’s registration of a domain name incorporating the mark of another to confuse Internet users is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Complainant provides screenshots of Respondent’s resolving webpage which incorporates Complainant’s mark. Therefore, the Panel holds that Respondent registered and uses the <fidelityprimeinvestment.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the <fidelityprimeinvestment.com> domain name. Actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize constructive notice as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent’s use of the <fidelityprimeinvestment.com> domain name to operate a website which displays Complainant’s mark in an apparent attempt to confuse Internet users demonstrates that Respondent had actual knowledge of Complainant’s rights in the FIDELITY INVESTMENT mark prior to registering the <fidelityprimeinvestment.com> domain name. Thus, the Panel holds that Respondent registered the <fidelityprimeinvestment.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <fidelityprimeinvestment.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 13, 2020
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