WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION FIL Limited v. Scotte Coutow Case No. D2018-2369 1. The Parties

Complainant is FIL Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Bermuda”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Scotte Coutow of London, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar

The disputed domain name (“the Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 14, 2018.

The Center appointed Isabel Davies as the sole panelist in this matter on November 20, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background

Complainant’s business of financial services was established in 1969, trading as Fidelity International Ltd. It was the international investment arm of Fidelity Investments founded in Boston, Massachusetts, United States of America but was spun off and became independent.

On February 1, 2008 Complainant changed its name to FIL Ltd.

Complainant is the owner of registered trademarks for FIDELITY, other marks including FIDELITY and the Fidelity logo in the UK, European Union and the United States of America dating from as early as 1996 (for example, UK trademark no. UK00002100049 FIDELITY, registered on December 6, 1996).

Complainant has registered the domain names registered on May 31, 2001 and registered before August 1996.

Respondent registered the Disputed Domain Name on September 9, 2016. 5. Parties’ Contentions A. Complainant

The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

Complainant states that it is the parent company of numerous subsidiaries in the financial services field in countries around the world and is the owner of trademark registrations across various jurisdictions “Complainant’s trademarks.” These demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights.

Complainant states that it is the parent company of numerous subsidiaries in the financial services field in countries around the world.

Complainant states that it has, itself or through its predecessors, subsidiaries or related companies, been providing financial services under the FIDELITY trademark and marks incorporating FIDELITY continuously since 1969.

Complainant states that it serves millions of retail clients and intermediaries such as banks, financial advisers, and insurance companies. Complainant’s more than 450 institutional clients include pension funds, life insurers, endowment funds, family offices and sovereign wealth funds. It states that, as of September 30, 2016 it was responsible for USD 85 billion in assets under administration.

Complainant states that it is well-recognized within the industry and that FIDELITY is a distinctive and well-known mark used by Complainant in connection with asset management goods and services.

It states that it maintains a strong Internet presence through its primary website “www.” and operates a number of local websites in Austria, Australia, Bahamas, Belgium, Bermuda, Cayman Islands, Overseas Territory of the UK, Chile, China, Czech Republic, Denmark, Finland, France, Germany, Hong Kong, China, Hungary, Ireland, Italy, Japan, Republic of Korea, Latin America, Luxembourg, Malta, Middle East, Norway, Netherlands, Poland, Portugal, Singapore, Slovakia, Spain, Sweden, Switzerland, Taiwan, and UK.

It also states that it is also the owner of numerous domain names with Top-Level Domains (“TLDs”) containing the FIDELITY trademark including .

Complainant states that when comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademarks.

It states that the Disputed Domain Name incorporates Complainant’s FIDELITY trademark while merely adding the generic terms “way to” to the beginning of the trademark and contends that the mere addition of these generic terms to Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark under Policy paragraph 4(a)(i), and the Disputed Domain Name must be considered confusingly similar to Complainant’s trademark.

It states that it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy paragraph 4(a)(i) and refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)

Additionally, Complainant contends, Respondent’s use of the Disputed Domain Name contributes to the confusion. Respondent is using the Disputed Domain Name to resolve to a website which makes unauthorized use of Complainant’s marks, which suggests that Respondent intended the Disputed Domain Name to be confusingly similar to Complainant’s trademark as a means of misleading consumers into visiting Respondent’s website in the mistaken belief that it was that of, or in some way related to or authorized by, Complainant.

As a result, Complainant contends, Respondent’s use of the Disputed Domain Name to resolve to a website that features Complainant’s logo and trademark is further evidence that the Disputed Domain Name is confusingly similar to Complainant’s trademark.

Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)).

Complainant states that it has the exclusive right to use Complainant’s trademarks in commerce on or in connection with the goods and/or services for which Complainant’s trademarks are registered.

Complainant states that Respondent is not commonly known by the Disputed Domain Name and contends that this evinces a lack of rights or legitimate interests referring to Policy, paragraph 4(c)(ii). Furthermore, Complainant states that it has not licensed, authorized, or permitted Respondent to use its trademarks or to register domain names incorporating them.

Complainant states that the pertinent WhoIs information identifies the Registrant as “Scotte Coutow,” which does not resemble the Disputed Domain Name in any manner – and contends that, where no evidence, including the WhoIs record for the Disputed Domain Name, suggests that Respondent is commonly known by the Disputed Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of Policy paragraph 4(c)(ii).

Complainant contends that, in creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by requesting them to register new accounts or log in to existing accounts. Thus, the website to which Respondent’s Disputed Domain Name resolves seeks to take advantage of the fame of Complainant’s trademarks and the trust and goodwill that Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to Respondent’s website for personal gain, and at worst, “phish” personal information from Complainant’s customers (in the event that Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). Complainant submits that this use of the Disputed Domain Name, presumably for commercial gain, and with devious motives, fails to constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate, noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).

Further, Complainant contends, the Disputed Domain Name redirects internet users to a website that copies and attempts to duplicate Complainant’s official website by copying its design and layout as well as featuring marketing materials belonging to Complainant, i.e. marketing video clip and company history. As such, the Disputed Domain Name’s website has purposely been designed to serve as a replica of Complainant’s website, all as a means of deceiving internet users into believing that the Disputed Domain Name and its website are associated with Complainant. Respondent’s attempt to pass off the Disputed Domain Name as being affiliated with Complainant, and in fact as being Complainant, is in itself evidence of the fact that Respondent does not have rights and legitimate interests in the Disputed Domain Name pursuant to Policy paragraph 4(a)(ii).

Further still, Complainant contends, Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name. Respondent’s inclusion of Complainant’s logo and trademarks on the Disputed Domain Name’s website is a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand, and Respondent is not only using the confusingly similar Disputed Domain Name but is also imitating Complainant by displaying Complainant’s logo and trademarks. This imitation amounts to Respondent passing itself off as Complainant, and “Respondent, in [also] using [a] confusingly similar domain name to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii).”

Complainant states that Respondent registered the Disputed Domain Name on June 25, 2017, which is significantly later than Complainant filed for registration of its FIDELITY trademarks with the United States Patent and T