DECISION

 

FMR Corp. v. Momm Amed Ia

Claim Number: FA0107000097775

 

PARTIES

Complainant is FMR Corp, Boston, MA, USA (“Complainant”) represented by Sean  F. Heneghan, of Fish & Richardson, P.C.  Respondent is Momm Amed Ia, Kwangju, KR (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fidelitynetbenefits.com> registered with BulkRegister.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 29, 2001; the Forum received a hard copy of the Complaint on July 3, 2001.

 

On July 5, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <fidelitynetbenefits.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 July 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 25, 2001 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@fidelitynetbenefits.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 Forum transmitted to the parties a Notification of Respondent Default.

 

On July 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The domain name at issue is <fidelitynetbenefits.com>.  This domain is identical and/or confusingly similar to the FIDELITY trademark and trade name and the FIDELITY NETBENEFITS trademark.

 

Respondent has no legitimate rights or interest in the domain name at issue because Respondent has neither used nor made any demonstrable preparations to use the domain or a corresponding name in connection with a bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.

 

Respondent’s use of <fidelitynetbenefits.com> is in bad faith, because it is an intentional attempt to attract Internet traffic to a third party’s website by creating a likelihood of confusion with Complainant’s trademarks for the sole purpose of redirecting such traffic to gambling and search services for commercial gain.

 

B. Respondent did not submit a Response.

 

FINDINGS

Complainant is the parent company of the affiliated group of businesses that operate under the trade name Fidelity Investments and is the owner of the FIDELITY trademark.  The FIDELITY trademark and trade name are in use in connection with various financial services throughout the United States and Canada and, through corporate affiliates, in many other jurisdictions.

 

Complainant is also the owner of a number of registrations and applications containing its FIDELITY trademark, including U.S. Trademark Registration Nos. 1,481,037, 1,481,040, 1,543,851, and 2,108,052, as well as U.S. Application No. 76/067,020 for FIDELITY.COM.  Complainant has also established common law rights in its continuous use of the trademark FIDELITY NETBENEFITS since at least as early as June 1996, primarily in connection with retirement account services, retirement planning services and financial information services.

 

Respondent registered the <fidelitynetbenefits.com> domain name with the registrar BulkRegister.com on June 23, 2000. Respondent is currently using the <fidelitynetbenefits.com> domain name to re-direct Internet users to the commercial site <centerfind.com>, an Internet site that includes banner ads and offers links to financial services.  In addition, a pop-up box appears over <centerfind.com> advertising “CONGRATULATIONS!!! 20% FREE $$$ BONUS CLICK OK to enter the newl [sic] CLUBDICECASINO.COM!!!”  If the OK box is clicked, an Internet user is directed to <clubdicecasino.com>, a website that features gambling services.

 

In five previous panel decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), Respondent has been found to have registered and used domain names in bad faith based on actions similar to those in the case at hand.  See General Electric Co. v. Momm Amed Ia, D2000-1727 (WIPO Mar. 21, 2001) (finding bad faith based on registration and use of <gebenefits.com> domain incorporating well-known GE mark), CEC Entertainment, Inc. v.  Momm Amed Ia, FA 95740 (Nat. Arb. Forum Oct. 30, 2000); Marriott Int’l, Inc. v. Momm Amed Ia, FA 95573 (Nat. Arb. Forum Oct. 23, 2000); News Group Newspapers Ltd. et al. v.  Momm Amed Ia, D2000-1623 (WIPO Jan. 18, 2001); and Capitol Broadcasting Co. v.  Momm Amed Ia, D2000-1610 (WIPO Jan. 24, 2001).

 

In addition, Respondent owns more than one hundred domain names, many of which incorporate well-known trademarks of other parties

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

Complainant has acquired common law rights to its FIDELITY NETBENEFITS mark due to the extensive and continuous use in connection with retirement account services.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning is established).

 

Respondent’s domain name <fidelitynetbenefits.com> is identical to Complainant’s FIDELITY NETBENEFITS mark.  See Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name “croatiaairlines.com” is identical to the Complainant's trademark “Croatia Airlines”).  Furthermore, the domain name is confusingly similar to Complainant’s FIDELITY family of registered marks.  See The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to the Complainant’s family of marks).

 

Complainant has satisfied the requirements under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent’s use of the domain name to divert Internet consumers to advertisements is not a bona fide offering of goods under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

 

Likewise, Respondent is not commonly known by FIDELITYNETBENEFITS under Policy ¶ 4(c)(ii), because the domain name resolves to a different site <centerfind.com>.  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

 

Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Respondent has shown bad faith registration under Policy ¶ 4(b)(ii) by engaging in a pattern of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

 

Additionally, Respondent exhibits bad faith use under Policy ¶ 4(b)(iv) by linking the domain name to, inter alia, a gambling site.  See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).

 

Complainant has satisfied the requirements under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name <fidelitynetbenefits.com> be transferred from Respondent to Complainant.

 

 

 James P. Buchele, Panelist

 

Dated: August 3, 2001

 

 

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