Wells Fargo & Company v. The Netbranch Network c/o Dan Boese
Claim Number: FA0812001237968
Complainant is Wells
Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargomorgage.biz>, registered with Dotster.
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 December 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2008 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 <wellsfargomorgage.biz> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargomorgage.biz> domain name.
3. Respondent registered and used the <wellsfargomorgage.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified
financial services company with $422 billion in assets and 146,000
employees. Complainant has provided its
financial services and related goods and services to the public since 1852, and
has registered its WELLS FARGO mark numerous times with the United States
Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 779,187 issued
Respondent registered the disputed <wellsfargomorgage.biz>
domain name 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 has submitted evidence of its registrations for
its WELLS FARGO mark with the USPTO and other governmental trademark
authorities worldwide. The Panel finds
that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb.
Respondent’s disputed <wellsfargomorgage.biz>
domain name differs from Complainant’s WELLS FARGO mark in the following ways:
(1) the space between the words of the mark has been removed; (2) the word
“mortgage” is included in its misspelled yet phonetically similar form as “morgage;”
and (3) the generic top-level domain “.biz” has been added. The Panel notes that the addition of a
generic top-level domain and removal of spaces is irrelevant under Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed
domain name. Based upon the allegations
made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶
4(a)(ii), thus shifting the burden of proof to
Respondent. Since Respondent has not
responded to the Complaint, the Panel may presume that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). However, the Panel in its
discretion chooses to examine the record to determine whether
Respondent has any rights or legitimate interests pursuant to the
factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interest in the subject domain names.”);
see also Hanna-Barbera Prods., Inc. v.
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant alleges that Respondent is not commonly known by the disputed domain name, and that Respondent is not a licensee of Complainant or otherwise permitted to use Complainant’s mark in a domain name. Complainant asserts that Respondent alleged in an e-mail to Complainant that it had permission to register the disputed domain name, though Complainant asserts that Respondent’s claim is false. The Panel has no evidence before it indicating that Respondent does have such rights. Moreover, the Panel notes that the WHOIS information lists Respondent as “The Netbranch Network c/o Dan Boese.” Therefore, without any contrary evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s confusingly disputed domain name resolves to a website that utilizes Complainant’s mark and logo to advertise directly competing financial services. The Panel therefore finds that Respondent has failed to create a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with 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.
Respondent’s disputed domain name resolves to a website that
directly competes with Complainant. The
Panel is thus presented with a textbook example of a respondent using a
disputed domain name to disrupt a complainant’s activities by offering
competitive services at the corresponding website. The Panel finds that Respondent registered
and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476
(Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s
registration of a domain name substantially similar to Complainant’s AMERICAN
SINGLES mark in order to operate a competing online dating website supported a
finding that respondent registered and used the domain name to disrupt the
complainant’s business under Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat.
Moreover, Respondent has intentionally created a likelihood of confusion as to Complainant’s endorsement or sponsorship of the disputed domain name and corresponding website due to the mark’s inclusion in both. Such an activity is clearly aimed at commercially benefiting from this competitive use. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
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 <wellsfargomorgage.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 22, 2009
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