FMR LLC v. Code View Technologies / Edward Ofori
Claim Number: FA2010001915882
Complainant is FMR LLC (“Complainant”), represented by Patrick Concannon of Nutter, McClennen & Fish, LLP, Massachusetts. Respondent is Code View Technologies / Edward Ofori (“Respondent)”, Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelityinvestmenttreasury.com>, registered with Dynadot, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2020; the Forum received payment on October 5, 2020.
On October 6, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <fidelityinvestmenttreasury.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 October 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2020 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@fidelityinvestmenttreasury.com. Also on October 7, 2020, 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 September 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, FMR LLC, provides a wide range of financial services, particularly investment services. Complainant has rights in the FIDELITY INVESTMENTS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,092,354, registered May 16, 2006). Respondent’s <fidelityinvestmenttreasury.com> is identical or confusingly similar to Complainant’s FIDELITY INVESTMENTS mark as it includes the mark in singular form, adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <fidelityinvestmenttreasury.com> domain name as Complainant never authorized Respondent to use the FIDELITY INVESTMENTS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent attempts to pass itself off as Complainant and misdirect customers away from Complainant’s legitimate website.
Respondent registered and uses the <fidelityinvestmenttreasury.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant to intentionally attract Internet users to Respondent’s website for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the FIDELITY INVESTMENTS mark prior to registering the disputed domain name due to Complainant’s large presence in the financial sector.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <fidelityinvestmenttreasury.com> domain name.
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’s registration of the mark with the USPTO (e.g. Reg. No. 3,092,354, registered May 16, 2006) is sufficient to demonstrate rights in the mark per 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).”). The Panel finds that Complainant has demonstrated rights in the FIDELITY INVESTMENTS mark per Policy ¶ 4(a)(i) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant argues Respondent’s <fidelityinvestmenttreasury.com> is identical or confusingly similar to Complainant’s FIDELITY INVESTMENTS mark as includes the mark in singular form and merely adds the gTLD “.com.” Respondent also adds the term “treasury” to the mark. The addition of a generic or descriptive term and a gTLD to the singular form of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Additionally, removing the letter “s” from a mark is insufficient to overcome confusing similarity. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <fidelityinvestmenttreasury.com> domain name as Complainant never authorized Respondent to use the FIDELITY INVESTMENTS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Super Privacy Service LTD c/o Dynadot,” and there is no other evidence to suggest that Respondent was authorized to use the FIDELITY INVESTMENTS mark. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <fidelityinvestmenttreasury.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to pass of as Complainant for commercial gain by diverting customers away from Complainant’s legitimate website.. Using a confusingly similar domain name to pass off as a complainant and redirect Internet traffic may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Complainant provides screenshots of Respondent’s resolving website, highlighting the website’s use of Complainant’s well-known logo, the green color associated with Complainant, and the phrase “Bank or Invest with Us.” Complainant argues Respondent uses the similarities between Complainant and Respondent’s websites to deceive internet users into believing Respondent’s website is affiliated with Complainant for commercial gain. This is evidence that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent registered and uses the <fidelityinvestmenttreasury.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant for commercial gain. Using a confusingly similar domain name to pass off as a complainant for financial gain can evidence bad faith per Policy ¶ 4(b)(iv). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information). Complainant provides screenshots of Respondent’s resolving website, highlighting the website’s use of Complainant’s well-known logo, the green color associated with Complainant, and the phrase “Bank or Invest with Us.” Complainant argues Respondent uses the similarities between Complainant and Respondent’s websites to deceive internet users into providing financial information. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends Respondent had actual knowledge of Complainant’s rights to the FIDELITY INVESTMENTS mark prior to registering the disputed domain name due to Complainant’s notable presence in the financial sector. Prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues that the famous nature of the FIDELITY INVESTMENTS mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. Complainant provides a declaration from Thomas Barry, Vice President of Intellectual Property for Complainant, which identifies Complainant as one of the world’s largest asset managers. The Panel finds from the fame of the mark and the use made of the mark that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name and that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fidelityinvestmenttreasury.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
November 5, 2020
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