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Generic Top Level Domain Name (gTLD) Decisions |
FMR Corp. v.
Bestinfo
Claim Number: FA0410000356350
PARTIES
Complainant is FMR Corp. (“Complainant”), represented by Sean F. Heneghan, 31
Reading Hill Avenue, Melrose, MA 02176.
Respondent is Bestinfo (“Respondent”),
2183 W Buckingham Rd. #324, Richardson, TX 75081.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <fideliy.com> registered with R&K Global Business Services, Inc. d/b/a 000Domains.com (“the Registrar”).
PANEL
The undersigned, David H. Tatham,
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 NAF”) electronically on October 28, 2004; the
NAF received
a hard copy of the Complaint on November 1, 2004.
On October 29, 2004, the Registrar confirmed
by e-mail to the NAF that the domain name <fideliy.com>
is registered with it and that Respondent was the current registrant of the
name. The Registrar has verified that Respondent is bound
by its registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with
the Uniform Domain name Dispute Resolution
Policy (the “Policy”) of the International Corporation for Assigned names and
Numbers
(“ICANN”).
On November 4, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of November 24, 2004 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@fideliy.com by e-mail.
A Response was received by the NAF but,
although it was dated November 23, 2004 and although it appeared to be
complete, it was not
received in hard copy by the filing deadline on November
24, 2004 and therefore was not in compliance with ICANN Supplemental Rule
5(a).
A timely Additional
Submission was received by the NAF on November 29, 2004 and it was determined
to comply with the NAF’s Supplemental
Rule 7.
On December 3,
2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complaint
Complainant is the parent company of an
affiliated group of businesses known as Fidelity Investments which is one of
the world's largest
providers of financial services, with custodied assets of
$1.9 trillion, including managed assets of $1 trillion as of July 31, 2004.
It
offers investment management, retirement planning, brokerage, human resources
and benefits outsourcing services to 21 million
individuals and institutions as
well as through 5,500 financial intermediaries. The firm is the largest mutual
fund company in the
United States, the number one provider of workplace
retirement savings plans, one of the largest mutual fund supermarkets, and a
leading online brokerage firm.
Complainant is the owner of the FIDELITY,
FIDELITY INVESTMENTS and FIDELITY.COM trademarks. Copies of registrations of
these marks
in the USA, Canada, Mexico, and Argentina were annexed to the
Complaint.
The FIDELITY trademark has been used in
connection with financial services continuously since 1930, primarily in the
USA, but also
in Canada and other jurisdictions throughout the world.
The FIDELITY.COM trademark has been used
in connection with Complainant’s online financial services continuously since
as early as
1996. Complainant’s use and
registration of the FIDELITY and FIDELITY.COM trademarks long predates
Respondent’s registration of the disputed
domain name.
Complainant refers to the fact that its
rights in its family of FIDELITY trademarks have been recognized in two
previous UDRP proceedings,
namely FMR Corp. v. Zuccarini, FA 113255
(Nat. Arb. Forum June 14, 2002) and FMR Corp. v. Ia, FA 97775
(Nat. Arb. Forum Aug. 3, 2001).
Complainant’s website at <fidelity.com> is one of the
most active financial services sites on the Internet. According to statistics obtained by Complainant from Media
Metrix, and annexed to the Complaint, <fidelity.com> averaged in
excess
of 2,793,00 unique visits, or “hits”, per month between July 2003 and July
2004. In March 2004 alone, the website
experienced over 3,727,000 hits. Complainant
uses its <fidelity.com> website in order to provide many of its services,
including online brokerage services, as
well as to advertise and promote its
services.
Complainant has spent substantial amounts
on advertising and promoting its financial products and services offered under
the FIDELITY
and FIDELITY.COM marks, including over $48 million on print and
television advertising thus far for 2004.
According to Competitrak, a prominent advertising tracking firm,
Complainant’s June 2004 print and television expenditures exceeded
$6.2
million.
By
virtue of the quality of its services, over seventy years of continuous use,
and extensive advertising and promotion, the FIDELITY
trademark is well known
to, and well regarded by, the consuming public.
Complainant contends that Respondent,
which is apparently affiliated with a Mr. David Webb, registered the disputed
domain name <fideliy.com> on June 30, 2003, long after Complainant
had adopted the FIDELITY and FIDELITY.COM trademarks. The disputed domain name seeks to take advantage of a common
typographical error made by Internet users when attempting to key Complainant’s
<fidelity.com> address into a Web
browser, namely omitting the letter “t”.
Respondent has been using the disputed
Domain name primarily to misdirect Internet users to a pay-per-click search
service that prominently
features links to financial services that are
virtually identical to, and that directly compete with, Complainant’s services,
such
as those located at the <sharebuilder.com> and <vanguard.com>
domain names. In addition, the search
directory page includes a link, under the title “Fidelity Investments”, that
directs a user to other unaffiliated
financial services. Internet users who reach the disputed domain
name also encounter several ‘pop-up’ advertisements and links to commercial
services,
further frustrating users seeking to access Complainant’s <fidelity.com> website.
Complainant’s research indicates that the above mentioned
search service is affiliated with DomainSponsor.com, a company that pays
commissions to domain name registrants for revenues generated from searches and
pop-up advertisements.
In accordance with Complainant's usual
practice regarding third parties it believes are attempting to trade on the
name and goodwill
of its valuable FIDELITY, FIDELITY INVESTMENTS and/or
FIDELITY.COM trademarks, Complainant’s legal department sent a cease and desist
letter to Respondent on March 1, 2004, giving notice that Respondent's
registration and use of the <fideliy.com> domain name infringed
and diluted its family of FIDELITY trademarks.
Complainant requested, among other things, that Respondent immediately
cease all use of the <fideliy.com> domain name and begin an
immediate transfer of the subject domain name.
When the Respondent did not respond to the March 1 letter and the
subject domain name remained active, Complainant followed up with
another communication on April 1, 2004.
Respondent did not respond to the April 1 email either and the
infringing domain was still active at the time of the filing of this
Complaint.
Copies of these cease and desist letters were annexed to the Complaint.
Complainant’s research also indicates
that Respondent has a history of acquiring domain names that are confusingly
similar to third
party trademarks and using said domains to misdirect Internet
traffic to commercial websites. In
three prior Panel decisions under the UDRP, Respondent has been found to have
registered and used domain names in bad faith based
on activities virtually
identical to those in the case at hand. They are: Incredibly Edible Delites,
Inc. v. Bestinfo, FA 317257 (Nat. Arb. Forum Oct. 11, 2004) (Bad faith
found based on registration and use of <incrediblyedibledelites.com>);
Pacific
Cycle, LLC v. Bestinfo, FA 247972 (Nat. Arb. Forum May 4, 2004) (Bad faith
found based on registration and use of <schwinnbikes.com>) and NIKE,
Inc. v. Bestinfo, Case No. D2002-0543 (WIPO Sept. 8, 2002) (Bad faith found
based on registration and use of <nikeshoes.com>). Copies of these
UDRP
decisions were annexed to the Complaint.
Furthermore, Complainant draws attention
to the fact that Respondent has registered a number of other domains that are
similar to
well-known third party trademarks, including IVILLAGE, BANANA
REPUBLIC, ANGELFIRE, BLOCKBUSTER, DALLAS COWBOYS, CHRYSLER, EBAY and
ASK
JEEVES, and it annexed copies of these registrations to the Complaint.
Complainant contends that Respondent is using these domain
names in an
identical manner to that in which it is using the disputed domain name, namely
to misdirect Web traffic to the same pay-per-click
search service.
In sum, Complainant contends that
Respondent has been involved in a pattern of bad faith domain name registration
and use and Respondent’s
conduct with regard to the disputed Domain name serves
as a classic example of the type of behavior the UDRP was instituted to remedy.
Complainant submitted a series of
arguments, backed up with references to UDRP decisions in support of its
contentions that the disputed
Domain name is confusingly similar to its
trademarks, that Respondent has no legitimate rights or interest in it, and
that Respondent
has registered and is using it in bad faith. These are
summarized below –
B.
Respondent
It is almost impossible to paraphrase the
Respondent’s Response, so the Panel reproduces it here in full and word for
word –
1.
The FIDELIY.COM Domain name Is Confusingly
Similar To Trademarks In Which Complainant Has Rights
Respondent admits that the name
(fidelity) is confusingly similar to the generic term “Fidelity” which
primarily is defined by Webster’s
as being of quality of sound, faithfulness,
loyalty, etc.When I acquired the domain name “fideliy.com”, I was unaware that
the complainant
plus over 500 other entities had a obtained or applied for a
trademark involving the use of
“Fidelity” in their company name. I
always felt that “fidelity”, “Banana Republic”, “Vanguard” are generic terms
and cannot be the exclusive rights of anyone. The term
“fidelity”, “banana
republic”, “Vanguard”, etc., has been defined in every Webster dictionary and I
always believe that such names
are generic and of which no one has exclusive
rights to control such names. I can understand why FMR and the other 500 plus
entities
had the desire to use “Fidelity” in their company names as it is a
good name for a company. The Complainant by choosing the name
“Fidelity” as
their company name in their original trademark application brought confusion to
the name as their was already over
ten companies having trademarks using solely
the name “Fidelity” as their company name.
The Complainant might in their mind believe that when people hear “Fidelity”
they think of investments but even the dictionary definition
does not define
“Fidelity” in any monetary sense. There are presently 4 companies that have
trademarks solely using the name “Fidelity”
which could use the same argument
against the Complainant in the fact that when these four company’s customers go
on the Internet
and type “Fidelity.com” they are taken to the Complainant’s
website. Evidently, the Complainant has no problem with that scenario.
2.
Respondent Has No Rights Or Legitimate Interests
In The Domain name
“Fidelity”
is a generic term and no one has the exclusive right to this name. I have every
right to acquire the name “Fideliy.com”
and make use of it in a commercial use.
It has been stated that over 6 million misspelled domain names are owned by
people around
the world. Here in the USA a part of domain registration fee goes
to the betterment of the Internet. Notwithstanding, I feel that
I have a right
to spend my money and acquire any variation of spelling of a generic name or term. The Complainant has no right to
“Fideliy.com” for the very reasons he makes in the argument against the
Respondent. There is an arrogance
in big business in the fact that they feel
that they can get their way most of the time and in general has no concern for
others
outside their corporate structure. The complainant does not care that
there are hundreds of Companies with trademarks using “Fidelity”
in their name.
A lot if not most of people who type in “Fidelity.com” on the internet are not
wanting to go to the Complainant’s
website. In fairness, how does the
Complainant ever believe that he has the exclusive right to own the name
“fideliy” when hundred’s
of companies are using and have obtained a trademark
using “Fidelity” solely or otherwise in
their company name long before the Complainant even filed for a trademark.
3.
FIDELIY.COM Has Been Registered And Is Being Used In
Bad Faith
a.
The Respondent’s Registration of the Domain name
was in Bad Faith
It is the Respondent’s belief that no one
has exclusive rights to generic terms or words or in any variation of a generic
word or
term. I have the name “Fideliy.com” parked at DomainSponsor.com which
is a company paying for Internet traffic. The Internet is evolving
into a
variety of commercial revenue generating uses and companies paying for traffic
is an important part of the viable options
as evidenced by the emergence of
companies such as “Yahoo”, “Google”, etc. , and the power of the
Internet’s commerce ability is being
fueled by internet traffic both direct and optimized. Most of the Icann
accredited Registrars default their
own domain nameservers to registered domain
names and divert this traffic to companies like “Yahoo”, “Google”, or have
their own
optimized search engine generating income. If I just sent this name to R&K (Icann approved Registrar) it
would default to their domain nameservers and they use the same
DomainSponsor,
is how I found out about DomainSponsor in the first place.
In Black v. Molson Canada
(Docket: O2-CV-231-828CM3) Justice B. Wright of the Ontario Superior Court,
whom the Panel has paraphrased to some extent in the
above reasoning, wrote in
his judgement dated July 18, 2002 :
Simply because a
domain name is identical or similar to a trademark name should not result in
the transfer of the domain name to the
trademark owner. In my view, unless
there is some evidence that the use of the domain name infringes on the use of
the trademark
name, a person other than the owner of the trademark should be
able to continue to use the domain name.
b.
Respondent’s Use Of The Domain name Is In Bad
Faith
The Complainant compares this type of
activity to a John Zuccarrini who at last count was incarcerated in Florida.
Mr.Zuccarrini was
convicted of sending non porn traffic to explicit porn sites which
is a violation of Federal Law. The Federal Law was a result of
what Mr.
Zuccarrini was doing and it is a good law.
Little kids were typing in Disney names for example and being directed
to explicit porn sites…a man cannot get any lower than that.
If I am using
the name in Bad Faith then 90% of Icann approved Registrars are acting in “Bad
Faith” as a lot of traffic to Registered
names thru these Registrars is being
optimized for traffic income in the same situation as the Complainant says I am
using it in
bad faith. The Complainant has NO more right to the name than I do
or the other hundreds of companies using “Fidelity.com” solely
or as a part of
their trademarked company names.
Using the Complainants arguments, how
would the Complainant ever explain to the hundreds of companies using
“Fidelity” in their trademarks
that the Complainant felt that the name and any
variation of the name belonged only to the Complainant. Complainant’s argument
to
be justified has to believe that everyone going on the Internet is typing in
“Fidelity.com” and is want information about investments,
financial; plans,
etc. I do not believe that is the case
as when I think about “fidelity” I think about sound…a counselor probably would
think about marital
relations.
When I first got this complaint I thought
about not answering it for the simple reason that “fideliy.com” does not get
very much traffic.
It will cost me more in postage for this Response than what
the name will generate in revenue in a year. I once heard a story about
a
millionaire on trial for stealing $50,000. The defense attorney argued to the
jury that his client was a millionaire and had no
reason to steal $50,000. The prosecutor’s answer was, have you ever
been driving down the road and see a cow standing knee deep in the finest green
grass and
having his head sticking through the barb wire fence nibbling on a
little stubble of grass in the other pasture. I think we have
the same
situation here. That little stubble of grass is my pasture and I want to keep
it. It’s strange that the Complainant brought
up “nikeshoes.com” as I just
talked to an attorney the other day about going to Federal Court and trying to
get the name back. In
Oct of 2000 I acquired the name “nikeshoes.com” and
immediately thought about getting a franchise or partnering with an authorized
dealer to sell Nike shoes retail on the Net. I recognized immediately of course
that I could not put a website as Nike is not a generic
name so I never put
this name up and anyone who typed in nikeshoes.com just got a “404” Page. I
thought since I was not using the
name for any purpose that it could not be
construed a trademark infringement. In the summer of 2001 I received a
complaint from the
in house Intellectual attorney for Nike threatening me with
all kinds of penalties and money if I did not transfer the name to them.
I
explained that a friend and I were in the process of raising capital to obtain
a franchise or partner with a dealer which would
make the use of the name
legal. Nike immediately filed a
complaint with W.I.P.O. saying I was depriving Nike of use of the name and it
was costing them untold lost
revenue.
In my Response to that complaint I argued that I never had a website up
and that I was close to obtaining the capital to become an
authorized dealer.
The panelist agreed with Nike and awarded the name to them saying that since I
had no website I had to use for
the name even though in my Response I explained
that I was trying to acquire a dealership so use of the name would be legal.
The
best I could figure in 2000-2001 was that “nikeshoes.com” was getting about
300 hits a day and today I estimate it is getting about
2200 hits a day. I have
since seen that if I would have had the money to go into Federal Court I would
not, according to several
opinions lost the name. I am a 61 year old Mechanical
Engineer by trade who got laid off in 1996 due to defense work slow down. I
looked at the net and thought it was a blessing. I told my wife when I acquired
“nikeshoes.com” that we were going into tennis shoe
sales. Start-up cost is high in that business but I
was getting there. Since Nike acquired the name in 2001 till the present the
page is
a “404” page and has never been used by Nike….that is the arrogance of
some big businesses. 2200-2500 hits a
day going to waste…makes you think about that little garage factory with all
the American ideas working for it and
were it is now. From my standpoint it is
a shame. In reference to Complainants
mentioning “Incredibledibledelights.com” please read the short one paragraph
statement on my Response
to that Complaint.
In short, I believe I have done nothing
wrong and certainly I am not causing any harm to the Complainant. With the
hundreds of trademarks
(513 Trademarks applied for or granted) being the most I
have ever seen for one name as part of a company name. I just cannot logically
see how the Complainant wants exclusive rights to a variation generic term and
thinks his interest is greater than all the rest of
the trademark name holders.
The ownership of ‘fideliy.com” should
remain in Respondent’s ownership as the Respondent did not register the name in
“bad faith”,
has a legitimate interest in the name, and is not using it in bad
faith.
C.
Additional Submissions
Complainant submitted the following
points in a Reply to Respondent’s Response.
Firstly, on a procedural matter,
Complainant asks that Respondent’s Response be found to be untimely and that
the Respondent be deemed
to have defaulted.
Respondent failed to submit its Response by the deadline set forth in
accordance with ICANN Rule 5(a). Specifically, Respondent did
not submit a hard
copy version of the Response with the National Arbitration Forum by November
24, 2004. According to The National Arbitration
Forum’s November 29 communication, it received only an email version of the
Response on November
24. Moreover,
Complainant only received the Response on November 25 (Thanksgiving Day) and
received a hard copy of the Response with Supporting
Exhibits on November 27.
Because of Respondent’s untimely
response, Complainant has been put at a disadvantage in preparing a timely
Reply in this proceeding. Moreover,
Respondent had ample opportunity to request to extend the period of time for
the filing of the Response, as per ICANN Rule
5(d), but failed to do so.
Under ICANN Rules, the Panel may either
choose to accept or decline to accept Respondent’s Response in deciding the
case. Ignoring
or missing a deadline without an excuse or justification by the
Respondent is not a minor or insignificant infraction to be overlooked
in the
procedural process. As was stated in The Vanguard Group, Inc. v. IQ Mgmt.
Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) in a similar procedural
matter, “[t]o rule otherwise would make reasonable time limits
meaningless.”
Secondly, Complainant points out that in
the Response, David Webb confirms that he and the named Respondent are one and
the same.
Thirdly, Complainant refers to the fact
that on page two of the Response, Respondent, for all intents and purposes admits
that <fideliy.com> is confusingly similar to Complainant’s
well-known FIDELITY and FIDELITY.COM trademarks.
Fourthly, Complainant emphasizes that
Respondent is, in fact, a serial cyber-squatter/typo-pirate engaged in a
strategy of registering
domain names based on well-known or famous trademarks
to maximize traffic to one or more directory-based commercial websites. While Complainant supplied evidence of this
fact in the initial Complaint, Complainant’s additional investigations show
that Respondent
has registered hundreds of domain names that are similar to
third party trademarks, including <usatoay.com>,
<tciketmaster.com>,
<dalascowboys.com>, <cragislist.com>,
<johnmccain.com>, <callaways.com>, <econologe.com>,
<westernunoin.com>,
<hp-printer>, <lewisandclarkcollege.com
>, <circuitciity.com>, <wwwbrucespringsteen.com> and
<victoriasecerets.com>
and it attached to the Reply evidence to this
effect.
Lastly, Complainant draws the Panel’s
attention to the fact that there are numerous decisions under the Policy that
state that the
use of the search service DomainSponsor.com, which Respondent
admits to be using in connection with the <fideliy.com> domain
name, does not constitute a bona fide offering of goods or services giving rise
to any right or legitimate interest and is
evidence of bad faith domain name
use.
DISCUSSION AND
FINDINGS
Preliminary Issues
1. It is clear from the Response, which is
mostly written in the first person, that Respondent (Bestinfo) and Mr. David
Webb are synonymous,
so the Panel will not attempt to distinguish between them.
2. Although the NAF
received an e-mail copy of the Response on the day of the deadline, the hard
copy was not received until 2 days
later. Respondent is therefore in breach of
ICANN Supplemental Rule 5(a) and the Panel must decide whether or not to accept
it.
The Panel is under
no obligation to do so, and indeed in its Reply Complainant refers to a case
where the Panel held that not to do
so would make all time limits meaningless.
On the other hand, it was held in Strum
v. Nordic Net Exch. AB, FA102843 (Nat. Arb. Forum Feb. 21, 2002) that “Ruling a response inadmissible because of
formal deficiencies would be an extreme remedy not consistent with the basic
principles
of due process.”
In this case, the due
date for filing the Response was November 24, 2004 and the following day was
Thanksgiving in the USA, which
is a national holiday and so there was no postal
service. Had this not been the case, presumably the hard copy of the Response
(which
the Panel notes is dated November 23, 2004) might have been delivered on
time.
In fact, as will
transpire hereafter, the Response does a woefully inadequate job at replying to
the Complaint, and it therefore probably
makes little difference whether it is
accepted or not. However, the Panel deems that it would be inequitable and
unfair towards Respondent
if it was not to accept the Response and so it will
be taken into account in the following Decision.
Applicable Standards
Paragraph 15(a) of
the Rules for Uniform Domain name Dispute Resolution Policy (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;
(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.
When
considering the question of similarity between a trademark and a disputed
domain name it is customary to disregard a suffix such
as ‘.com’ because it has
no relevant significance and because it is generic. Therefore the comparison to
be made in this case is
between FIDELITY on the one hand and FIDELIY on the
other. In the view of the Panel, there is no doubt that they are similar, the
latter being but a single letter short of the former. Indeed, in the first
sentence of his Response, Respondent appears to admit
as much (although since
he spells both words the same it is not entirely clear whether he intended to
say this).
Respondent
makes much play of the fact that no one may claim exclusive rights in a generic
word such as ‘fidelity’, that “over 500
other entities had obtained or applied for a trademark involving the use of
‘Fidelity’ in their company name”, that “their
(sic) was already over ten companies having trademarks using solely the
‘Fidelity’ as their company name” and that “There are presently 4 companies that have trademarks solely using the
name ‘Fidelity’”. However his
argument is flawed. In the first place his only evidence of the ‘over 500’ is
the first page of a printout of a search
at the USPTO for the word ‘fidelity’
which appears to show 21 live trademarks which contain this word, all of them
having other additional
wording either before or after it. Secondly, of the 13
trademarks of which he exhibited copies, 1 is shown as actually belonging
to
Complainant, while 8 of them are marked as being ‘Dead’.
But this is
beside the point. The UDRP only
requires a Complainant to prove to the satisfaction of the Panel that it has
rights in a trademark which is identical
or confusingly similar to the disputed
domain name. In this case Complainant has proved, to the satisfaction of the
Panel, that it
owns rights in the trademark FIDELITY, having incontestable US
registrations of the word, several non-US registrations of it, and
common law
rights in it through substantial use for over 70 years. Two earlier UDRP cases
have already come to the same conclusion.
Thus, since it
has already been held that Complainant’s trademarks and the disputed domain
name are confusingly similar, the Panel
finds that paragraph 4(a)(i) of the
Policy is proved.
There are a number of defenses available
to a Respondent in response to a charge that he has no legitimate rights or
interest in the
disputed domain name. However in this case, Respondent relies
on none of them. He again comes up with the argument that the word
‘fidelity’
is generic; he adds that he has every right to make commercial use of the
miss-spelt word ‘fideliy’, and that because
hundreds of other companies utilise
the word ‘fidelity’ Complainant cannot claim exclusive right to it. He also
seems to believe
that he is the ‘little man’ being persecuted by ‘big
business’. But none of these arguments has any bearing on the charge.
An internet user who accesses the
disputed domain name is diverted to a page at the “cost per click” search
engine at DomainSponsor.com.
Once there, users are confronted with search
results and a Web directory that displays a search box entitled “Popular
Searches” and
features links to competing financial services. It was held, for
example, in Hi-Bred International Inc. v. Chan, FA 154119 (Nat. Arb. Forum Apr. 9, 2001) that there
are no rights or legitimate interests where Respondent uses a ‘typo’ domain to
intentionally
and misleadingly divert users to a commercial search service.
These same users also encounter a series
of “pop-up” ads for a variety of goods and services, none of which are
associated with Complainant
and it has been held in N. Coast Med., Inc. v.
Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) and in
Ticketmaster Corp. v. DiscoverNet, Inc., Case No. D2001-0252 (WIPO Apr. 9,
2001) that the use of a confusingly similar domain name in order to divert
Internet users interested
in Complainant’s services to a website that features
competing services is not a use in connection with a bona fide offering of
goods
or services.
There is no affiliation, association or
business relationship of any kind between Complainant and Respondent. Furthermore, Complainant has not licensed or
authorized Respondent to use its FIDELITY and/or FIDELITY.COM trademarks in any
manner.
As was pointed out above, the disputed
domain name is a misspelling of Complainant’s trademark and this, coupled with
Respondent’s
above mentioned activities, convinces the Panel that there is no
way that Respondent could possibly have any rights or legitimate
interest in
it.
Therefore, paragraph 4(a)(ii) of the
Policy is also proved.
In this Complaint Complainant has also
produced proof that Respondent has registered a number of other domain names
which are mere
misspellings of other people’s trademarks. A further list was
supplied in the Reply to the Response and Complainant drew attention
to three
earlier decisions in which Respondent was also similarly engaged. Therefore,
apart from this being in breach of paragraph
4(b)(ii) of the Policy, Respondent
appears to be a clear example of someone who is a ‘typosquatter’ and indeed
Respondent virtually
admits this in the Conclusion to his Response when he
gives a rambling history of his registration of the <nikeshoes.com>
domain.
One can only hope that he now realizes that far from “doing nothing wrong” as he claims, that
is precisely what he is doing according to the UDRP.
It has been held on numerous occasions
that typosquatting is a breach of paragraphs 4(b) (ii) and (iv) of the Policy.
The Panel refers,
for example, to National Association of Professional
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) where it was
held that “Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination,
by preying on Internauts who make common
typing errors...is inherently parasitic and of itself evidence of bad faith.” A similar finding was made in Pfizer
v. Seocho, D2001-1199 (WIPO Nov. 28, 2001) where the Panel held: “I consider it to be bad faith registration
where a Respondent has registered a domain name which is clearly seeking to
typosquat
the Complainant’s famous mark and primary web-site. Equally, one can make the same conclusion
about bad faith use being satisfied by the ongoing use of the domain name for
typosquatting.” Furthermore it was held in Medline, Inc. v. Domain
Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) that “in typosquatting cases, such as this one,
it would be difficult for Respondent to prove to the Panel that it did not have
actual
knowledge of Complainant’s distinctive MEDLINE mark when it registered
the infringing <wwwmedline.com> domain name.”.
As was pointed out above, Respondent is
using the disputed domain name in an attempt to attract, for commercial gain,
Internet users
to a commercial search service, which is also evidence of bad
faith, under paragraph 4(b)(iv) of the Policy, as well as indicative
of a lack
of legitimate interest.
Finally, despite being notified on two
occasions of Complainant’s earlier rights and of its concerns regarding the
registration and
use of the disputed domain name, Respondent continued to use
it and indeed never had the courtesy to reply to Complainant’s communications.
This continued registration and use goes a long way towards further proving bad
faith.
All of the above show clearly that the
disputed domain name was registered in bad faith, and the Panel finds that
paragraph 4(a)(iii)
has been amply proved.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <fideliy.com> domain name be TRANSFERRED
from Respondent to Complainant.
David H.
Tatham, Panelist
Dated: December 27, 2004
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