Wells Fargo & Company v. Trust Busters, Inc. c/o
Claim Number: FA0712001116413
Complainant is Wells Fargo & Company (“Complainant”), represented by Ryan
M. Kaatz, of Faegre & Benson, LLP, 2200
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wellsfargofha.info>, and <wellsfargo-fha.info>, registered with GoDaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2007 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@wellsfargofha.info, and postmaster@wellsfargo-fha.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargofha.info>, and <wellsfargo-fha.info> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargofha.info>, and <wellsfargo-fha.info> domain names.
3. Respondent registered and used the <wellsfargofha.info>, and <wellsfargo-fha.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified
financial services company providing banking, insurance, and investments for
more than 27 million customers. Complainant
registered the WELLS FARGO mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No 779,187 issued
Respondent registered the disputed domain names on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant registered the WELLS FARGO mark with the USPTO,
and therefore, established rights to the mark pursuant to Policy ¶
4(a)(i). See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum
Complainant contends that the <wellsfargofha.info>, and <wellsfargo-fha.info> domain
names are confusingly similar to the WELLS FARGO mark. Respondent’s addition of the letters “f”,
“h”, and “a,” and a hyphen to the registered mark is insufficient to
distinguish the disputed domain names from the registered mark. In addition, because all domain names are
required to have a top-level domain, Respondent’s use of the generic top-level
domain (“gTLD”) “.info” does not distinguish the disputed domain names from
Complainant’s registered mark. Therefore,
the Panel finds that the disputed domain names are confusingly similar to Complainant’s WELLS
FARGO mark pursuant to Policy ¶ 4(a)(i).
See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000)
(finding that <kelsonmd.com> is identical or confusingly similar to the
complainant’s federally registered service mark, KELSON); see also Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing
the Respondent does not have rights or legitimate interests in the disputed
domain names. Once Complainant has made
a prima facie case showing that
Respondent lacks rights and legitimate interests, the burden shifts to Respondent
to show that it does have rights or legitimate interests in the <wellsfargofha.info>, and
<wellsfargo-fha.info> domain names. The Panel finds that Complainant has met the
initial burden of showing that Respondent lacks rights and legitimate
interests, and therefore has made a prima
facie case under Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the WELLS FARGO mark, and that Respondent is not and has
never been commonly known by the disputed domain names. Further, the WHOIS information does not
indicate that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not
commonly known by the <wellsfargofha.info>, and
<wellsfargo-fha.info> domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the <wellsfargofha.info>, and <wellsfargo-fha.info> domain names to advertise links to third-party competitors. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Moreover, the Panel finds that Respondent’s use of the <wellsfargofha.info>, and
<wellsfargo-fha.info> domain names to commercially gain by
advertising links to competing services constitutes bad faith registration and
use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <wellsfargofha.info>, and
<wellsfargo-fha.info> domain names for commercial gain by
advertising links to competing services, and benefiting from the likely
confusion between Complainant’s mark and the disputed domain names. The Panel finds that the similarity between
the disputed domain names and the WELLS FARGO mark are likely to create
confusion as to Complainant’s source, sponsorship, affiliation, or endorsement
of the website that resolves from the disputed domain names under Policy ¶
4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name
resolved to a website that offered links to third-party websites that offered
services similar to the complainant’s services and merely took advantage of
Internet user mistakes); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargofha.info>, and <wellsfargo-fha.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 14, 2008
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