Wells Fargo & Company v. Domain Registrar
Claim Number: FA0805001189804
Complainant is Wells Fargo & Company (“Complainant”), represented by Ryan
M. Kaatz, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellfargo-online.com>, registered with Register.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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of June
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellfargo-online.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellfargo-online.com> domain name.
3. Respondent registered and used the <wellfargo-online.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a diversified financial services company that
provides banking, insurance, investments, mortgages and consumer finance
services. Complainant registered the WELLS
FARGO mark with the United States Patent and Trademark Office (“USPTO”) on
Responded registered the <wellfargo-online.com>
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.
The Panel finds that Complainant has established rights in the WELLS FARGO mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).
Complainant contends that Respondent’s <wellfargo-online.com> domain name is confusingly similar to its WELLS FARGO mark. The <wellfargo-online.com> domain name differs from Complainant’s mark in five ways: (1) the letter “S” has been removed; (2) the space between the words has been removed; (3) a hyphen has been added to the end of the mark; (4) the generic term “online” has been added after the hyphen; and (5) the generic top-level domain (“gTLD”) “.com” has been added.
Removing single letters and spaces
between words does not avoid Internet visitors’ confusion between a domain name
and a complainant’s mark. See
Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <wellfargo-online.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Nevertheless, the Panel chooses to evaluate all of the evidence under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the <wellfargo-online.com>
domain name, nor has it ever been the owner or licensee of the WELLS FARGO
mark. The WHOIS record for the disputed
domain name lists Respondent as “Domain
Registrar.” This evidence, along
with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, compels the Panel to find that Respondent is not
commonly known as <wellfargo-online.com>
pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum
Respondent maintains a website at the <wellfargo-online.com> domain name that features links to third-party websites offering the financial services of both Complainant and Complainant’s competitors. Respondent’s website that resolves from the disputed domain name also contains a field that prompts Internet visitors to enter their e-mail address in an apparent attempt to get access to confidential personal information, a practice known as “phishing.” The Panel finds that these uses of the <wellfargo-online.com> domain name are neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is disrupting
Complainant’s business by using the disputed domain name to divert Internet customers
from Complainant’s website to Respondent’s website that resolves from the
disputed domain name. Respondent is
accomplishing this through the confusion caused by the similarity between the
WELLS FARGO mark and the <wellfargo-online.com>
domain name. The Panel finds that
Respondent’s use of the disputed domain name disrupts Complainant’s business,
and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent in engaging in a
“phishing” scheme to get access to the confidential personal information of
Internet visitors who mistake Respondent’s website at the <wellfargo-online.com> domain name
for Complainant’s legitimate website. Because
Respondent is taking advantage of a likelihood of confusion to engage in
fraudulent activity, the Panel finds pursuant to Policy ¶ 4(a)(iii)
that this is also evidence of registration and use in bad faith. See Juno
Online Servs., Inc. v. Nelson, FA 241972 (Nat.
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 <wellfargo-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 25, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum