Wells Fargo & Company v.
The Trust Advocates, Inc. c/o
Claim Number: FA0712001117262
PARTIES
Complainant is Wells Fargo & Company (“Complainant”), represented by Ryan M. Kaatz, of Faegre
& Benson, LLP, 2200
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargo-fha.us>, registered with Godaddy.com,
Inc.
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on December 4, 2007;
the Forum received a hard copy of the Complaint on December 4, 2007.
On December 4, 2007, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <wellsfargo-fha.us> domain name is registered with Godaddy.com,
Inc. and that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On December 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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 <wellsfargo-fha.us> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2.
Respondent does not have any rights or
legitimate interests in the <wellsfargo-fha.us>
domain name.
3.
Respondent registered and used the <wellsfargo-fha.us> domain name in
bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Wells Fargo & Company, is a
diversified financial services company that serves 27 million customers at over
6000 locations. Since 1852, Complainant
has operated its banking and trust services under the WELLS FARGO mark (Reg.
No. 779,187 issued October 27, 1964), which was registered with the United
States Patent and Trademark Office (“USPTO”).
Respondent registered the <wellsfargo-fha.us> domain name on
September 14, 2007. Respondent is
currently using the disputed domain name to resolve to a website which features
search engines and links to websites offering products and services in direct competition
with Complainant.
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(f), 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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has established sufficient rights in the WELLS FARGO mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <wellsfargo-fha.us> domain name incorporates Complainant’s entire WELLS FARGO mark while adding a hyphen and the well-known acronym of the Federal Housing Administration (“FHA”). The inclusion of the country-code “.us” fails to add any distinguishing characteristic to the disputed domain name. The insertion of the acronym “fha” likewise fails to distinguish the disputed domain name. The addition of a hyphen is irrelevant in a Policy ¶ 4(a)(i) analysis. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the UDRP is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to [UDRP] Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <wellsfargo-fha.us> domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s
failure to respond to the Complaint allows the Panel to conclude that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will examine the record to determine if Respondent
does have rights or legitimate interests pursuant to Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <wellsfargo-fha.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent is using the <wellsfargo-fha.us> domain name to
resolve to a website which features links to websites offering products and
services in direct competition with Complainant. Respondent presumably receives referral fees
from the advertisers listed on its website.
Thus, the Panel finds that Respondent’s use of the disputed domain name
does not constitute a bona fide offering of goods and services pursuant
to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells
Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that using a domain name to direct Internet traffic to a website
featuring pop-up advertisements and links to various third-party websites is
neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
Respondent offers no evidence to
suggest that it is commonly known by the <wellsfargo-fha.us>
domain name, which is significant given Complainant’s long-standing and
widespread use of the WELLS FARGO mark.
Moreover, the WHOIS domain name registration information offers the same
conclusion. Thus, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(iii). See
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply);
see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be
difficult for Respondent to demonstrate that it had rights or legitimate
interests in the domain name given Complainant's long and substantial use of
its unique and famous XEROX mark.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wellsfargo-fha.us> domain name to
resolve to a website which features links to websites with products and
services in direct competition with Complainant. The Panel therefore finds that Respondent’s
use of the disputed domain name is intended to disrupt the business of Complainant
pursuant to Policy ¶ 4(b)(iii). See
Respondent’s use of Complainant’s WELLS FARGO mark within
the disputed domain name creates a likelihood of confusion as to the source and
affiliation of Respondent’s website and the disputed domain name. Further, Respondent’s presumed receipt of
referral fees from advertisers listed on its website justifies the conclusion
that Respondent registered the disputed domain name to garner commercial
benefits. Therefore, the Panel finds
that Respondent engaged in bad faith registration and use of the disputed
domain name pursuant to Policy ¶ 4(b)(iv).
See H-D Michigan, Inc. v. Petersons Auto., FA
135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargo-fha.us> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 17, 2008
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