Fisher Investments has been granted a temporary restraining order against two websites that Fisher claims infringe and dilute the RIA's registered "Fisher Investments" trademark in violation of the Lanham Act and constitute "cybersquatting."
The U.S. District Court for the Northern District of California ordered the suspension of the domains fisher-investments-europe.org and fisherinvestmentseurope.net on May 15, enjoining and restraining the sites "from taking any actions to transfer the domain names from Dynadot to any other registrar, from operating the domain names, or from otherwise using the 'Fisher Investments' marks."
In a May 13 filing, Fisher Investments said the websites "are scams that attempt to deceive consumers into believing they are legitimate Fisher websites to bait them into submitting their personal information on web forms. The domain names are confusingly similar to Fisher's registered marks and appear designed to deceive consumers and trade on Fisher's reputation and goodwill. The unknown registrants are using them to host websites styled as 'Fisher Investments Europe,' creating the false impression that the sites are operated by Fisher or one of its authorized European affiliates."
The court on May 15 ordered Dynadot and any registrar, registry or domain-name authority with control over the domain names "fisher-investments-europe.org" and "fisherinvestmentseurope.net" to "lock and disable such domain names, prevent any transfer or modification of the domain names" except by further order of the court.
Fisher and its affiliates manage over $387 billion in assets and have developed relationships with more than 200,000 clients globally, "reflecting decades of trust, reputation, and goodwill" tied to the Fisher Investments name, the order states.
Fisher owns Fisher Investments for "investment management and investment advisory services," the order states, as well as for "investment advisory services" and "investment management."
Repeated Complaints
Both registrations remain valid.
Fisher alleges that "its 'existing and prospective clients rely on' these marks 'to identify Fisher's legitimate investment-advisory services, market commentary, client resources, and communications,'" the order continues.
"These include 'a variety of global services,' including 'services offered in Europe,' such as 'Fisher Investments UK' and 'Fisher Investments Europe Limited,' a wholly owned subsidiary of Fisher," the order states.
Fisher-investments-europe.org hosts a website styled as the "official website" for "Fisher Investments Europe" in France, the order continues, while fisherinvestmentseurope.net also purports to be an official website for "Fisher Investments Europe."
Fisher said that "existing or potential customers might believe these domain names and websites are operated or endorsed by Fisher, and might therefore provide personal information to the unknown registrants of the domain names," the order states.
Fisher's repeated complaints to Dynadot Inc., the publicly listed registrar for both domain names, to have the domains disabled were unsuccessful. Dynadot said it "lacks authority to decide ownership of the domain names," the order states, and "declined to identify or provide contact information for the domain names' registrants absent a subpoena or court order, citing its privacy policy."
Having failed to secure suspension of the domain names, Fisher commenced its action on May 13.
"As a result of Fisher's complaints to Dynadot, browsers and security services have flagged the websites as deceptive or as associated with suspected phishing schemes, but the websites remain operational and available to the public," according to the order.
The temporary restraining order is effective until 12 p.m. on May 29, the order states. The registrants of the "allegedly infringing domain names and any other claimants to the domain names" are ordered to show cause why a permanent injunction should not be issued on May 27, the order states. After the TRO expires, the court will either extend it into a preliminary injunction or not. The PI would essentially extend the TRO through trial, so the PI could last for months or years.
Fisher Investments declined to comment.
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