FMR LLC v. jinadu ekundayo
Claim Number: FA1811001815071
Complainant is FMR LLC (“Complainant”), represented by Patrick J. Concannon of Nutter McClennen & Fish LLP, Massachusetts, USA. Respondent is jinadu ekundayo (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelitybitcoin.club>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2018; the Forum received payment on November 5, 2018.
On November 5, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <fidelitybitcoin.club> 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 November 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2018 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@fidelitybitcoin.club. Also on November 12, 2018, 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 December 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest asset management companies providing investment, financial planning, brokerage, and money management services. It has $2.6 trillion in assets under management since September 30, 2018. Complainant has rights in the FIDELITY mark dating back to 1930 through its use of the mark and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and other national trademark offices in various countries. Respondent’s <fidelitybitcoin.club> domain name, registered on May 11, 2018 is confusingly similar to Complainant’s FIDELITY mark as Respondent merely adds the descriptive term “bitcoin” and the “.club” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <fidelitybitcoin.club> domain name. Respondent is not authorized or licensed to use Complainant’s FIDELITY mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a fraudulent scheme.
Respondent registered and uses the <fidelitybitcoin.club> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it passes itself off as Complainant. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the FIDELITY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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 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 (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 claims rights in the FIDELITY trademark based upon registration of the mark with the USPTO and other national trademark registration offices in various countries. Copies of some of these registration certificates have been submitted into evidence. Registration of a mark with such national offices is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the FIDELITY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fidelitybitcoin.club> domain name is confusingly similar to the FIDELITY mark, as the name incorporates the mark in its entirety, while adding the descriptive term “bitcoin” and the “.club” gTLD. Adding a descriptive term and a gTLD to a complainant’s fully incorporated mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. This can be especially true where the added terms relate to the nature of a complainant’s business. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”).
The Panel therefore determines the <fidelitybitcoin.club> domain name is confusingly similar to the FIDELITY mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <fidelitybitcoin.club> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the FIDELITY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant of the <fidelitybitcoin.club> domain name as “jinadu ekundayo,” and no information on the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <fidelitybitcoin.club> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <fidelitybitcoin.club> domain name is demonstrated by its failure to use the name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to pass itself off as Complainant in order to offer fake cryptocurrency related financial services. Use of a disputed domain name to pass oneself off as a complainant in order to commercially benefit is not a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website as captured on July 3, 2018, which features Complainant’s FIDELITY mark in association with cryptocurrency related financial investing services. The website claims that it is “The Most Secured Place To Invest Your Bitcoins” and offers various “Investment Plans” which it claims will provide a 50% total return within a matter of 8-24 hours of the initial investment. The site lists an address in “BrooKlyn, New York” [typo in the original] but the Complainant provides the results of its research showing that there is no such address in New York or anywhere else. In contrast, the WHOIS record of the disputed domain displays an address for the Respondent in the country of Nigeria. In view of the above evidence, Complainant asserts that the Respondent’s claimed investment company does not actually exist but that it is merely operating a fraudulent website intended to deceive would-be bitcoin investors. The Panel also notes that Complainant sent a takedown request to the hosting provider for the <fidelitybitcoin.club> website and, as a result, this site no longer resolves to any content. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
In light of the above, and in the absence of any response or other submission on the part of Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that in view of the global notoriety of Complainant's FIDELITY mark, it is inconceivable that Respondent could have registered the <fidelitybitcoin.club> domain name without actual or constructive knowledge of Complainant's rights in the mark. The Panel notes that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge – particularly where a respondent is not located in a country, such as the United States, whose laws recognize that doctrine. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, actual knowledge of a trademark is adequate to underpin a finding of 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.”) Based upon the international reputation of Complainant's FIDELITY mark resulting from its extensive use thereof since 1930 and the content of the <fidelitybitcoin.club> website, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in its mark prior to registering the disputed domain name. The Panel therefore finds that Respondent had actual knowledge of Complainant’s rights in the FIDELITY mark at the time it registered the disputed domain name.
Complainant next claims that Respondent’s use of the <fidelitybitcoin.club> domain name to pass itself off as Complainant demonstrates that Respondent registered and uses the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel notes that Complainant provides screenshots of the disputed domain name’s resolving website, captured on July 3, 2018, which feature facsimiles of Complainant’s FIDELITY mark in connection with cryptocurrency financial investing services. Further, Complainant states that Respondent’s website no longer contains any content since it was taken down as a result of Complainant’s request to the relevant hosting provider. Such recognition of improper activity by a hosting provider, though certainly not dispositive, may, in view of all the evidence presented in a case, further support a finding of bad faith registration and use. The Panel thus finds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
In light of the above, and in the absence of any response or other submission on the part of Respondent, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith under 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 <fidelitybitcoin.club> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 5, 2018
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