DECISION

FMR Corp. v. John Zuccarini

Claim Number: FA0205000113255

PARTIES

Complainant is FMR Corp., Boston, MA, USA (“Complainant”) represented by Merton Thompson, of Fish & Richardson P.C.  Respondent is John Zuccarini d/b/a Cupcake Party, Nassau, BAHAMAS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fideilty.com>, registered with Joker.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 3, 2002; the Forum received a hard copy of the Complaint on May 6, 2002.

On May 6, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <fideilty.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 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@fideilty.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 June 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.”  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

1. Respondent’s <fideilty.com> domain name is confusingly similar to Complainant’s registered FIDELITY mark.

2. Respondent has no rights or legitimate interests in the <fideilty.com> domain name.

3. Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant is the owner of numerous registrations and applications containing its FIDELITY trademark, including U.S. Trademark Reg. Nos. 1,481,037; 1,481,040; 1,543,851 and 2,469,578, among others. Complainant uses the FIDELITY mark in connection with financial services worldwide, including online financial services located at <fidelity.com>.

Respondent registered the contested domain name on June 4, 2000. Respondent is currently using the <fideilty> domain name to direct Internet users to <amaturevideos.nl>, a commercial Internet site that features pornographic material. In numerous prior Panel decisions under the Policy, Respondent has been found to have registered domain names infringing on others’ marks and directing users to pornographic sites.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 established its rights in the FIDELITY mark through registration with the United States Patent and Trademark Office (“USPTO”) and subsequent continuous use. Respondent’s <fideilty.com> domain name is confusingly similar to Complainant’s mark. The transposition of two letters, in this instance the ‘i’ and ‘l’ in Complainant’s mark, fails to create a distinct mark capable of overcoming a confusingly similar claim. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).

Additionally, Respondent’s domain name is confusingly similar to Complainant’s mark because it incorporates a common typographical error. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to the Complainant’s famous mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Given the popularity and notoriety of Complainant’s FIDELITY mark, it seems unlikely that Respondent could have any rights or interests in a domain name incorporating the word FIDELITY. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent has used the disputed domain name to redirect Internet users to a pornographic website by taking advantage of the goodwill established by Complainant in its mark. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Respondent is not commonly known by “fideilty” or <fideilty.com> pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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>).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the famous and distinctive nature of Complainant’s FIDELITY mark and the listing on the Principal Register of the USPTO, Respondent is thought to have been on notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <fideilty.com> domain name. Thus, Respondent’s registration despite this notice is evidence of bad faith registration. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark, and thus, Respondent registered the domain name in bad faith).

Respondent registered and used <fideilty.com>, a domain name confusingly similar to Complainant’s FIDELITY mark, to trade on Complainant’s goodwill and create confusion as to the source or sponsorship of its website. Such behavior demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iv). Respondent’s sole purpose in registering Complainant’s established mark was to maximize the amount of Internet traffic it could divert to Respondent’s website. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.   

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <fideilty.com> domain name be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 14, 2002

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