Wells Fargo & Company v. Mihyun Kim
Claim Number: FA0812001238044
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 <wellsfargoibk.com>, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2008.
On December 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoibk.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 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@wellsfargoibk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 <wellsfargoibk.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoibk.com> domain name.
3. Respondent registered and used the <wellsfargoibk.com> 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 that maintains $422 billion in assets and 146,000 employees. Complainant provides banking, insurance, investment, mortgage, and consumer finance services for more than 27 million customers. Complainant has operated under the WELLS FARGO mark since 1852, and has registered the mark numerous times with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 779,187 issued Oct. 27, 1964), as well as other governmental trademark authorities worldwide. Complainant also owns and utilizes the <wellsfargo.com> domain name in connection with its business operations.
Respondent registered the disputed <wellsfargoibk.com> domain name on July 19, 2008. The disputed domain name resolves to a website that prominently displays Complainant’s WELLS FARGO mark, and provides third-party links and advertisements for Complainant’s direct financial services competitors.
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.
To begin, Complainant must submit evidence of its rights in
the WELLS FARGO mark. Complainant has
provided documentation of its numerous trademark registrations of the mark with
the USPTO. Therefore, the Panel finds
this evidence to be sufficient to demonstrate Complainant’s rights in the WELLS
FARGO mark under Policy ¶ 4(a)(i). See
Respondent’s disputed <wellsfargoibk.com> 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 generic top-level domain “.com” has been added; and (3) the letters “ibk” have been included. The Panel chooses to follow the findings of the panel in Bond & Co. Jewelers, Inc. v. Texas International Property Associates., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), which found that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i). Thus, the Panel need not further address such alterations. However, the Panel must still consider the addition of the letters “ibk.” Complainant contends that these letters represent a common abbreviated form of the phrases “investment banking” or “Internet banking.” Whether or not this assertion is accurate does not necessarily alter the Panel’s findings. If the letters do represent these phrases, they would therefore describe Complainant’s financial activities and thus heighten any confusing similarity between the disputed domain name and the mark under Policy ¶ 4(a)(i). See, e.g., Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). If the opposite is true—namely that the letters are merely indiscriminate—the mark still remains the dominant portion of the disputed domain name and thus does not negate the resulting confusing similarity. See, e.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel finds that in either situation the disputed domain name remains confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 780200 (Nat. 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. Entm’t Commentaries, 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 Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant has alleged that Respondent is not commonly known by the disputed domain name and is not a licensee of Complainant. The Panel notes that the WHOIS domain name registration information lists Respondent as “Mihyun Kim.” This registrant listing bears no semblance of relation to the disputed domain name in terms of identity. Therefore, the Panel finds that the evidence within the record demonstrates that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website that
prominently features Complainant’s WELLS FARGO mark, and provides links to
Complainant’s direct financial services competitors. The submitted screenshot of the resolving
website supports Complainant’s assertions, and the Panel infers that Respondent
intends to maximize its commercial gains through the receipt of click-through
fees. The Panel therefore finds that
Respondent has not created 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug.
2, 2006) (finding that the operation of a commercial web directory displaying
various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent was not using the <tesco-finance.com>
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name resolves to a website that
attempts to route Internet users to Complainant’s direct competitors through
the use of commercial click-through links and advertisements. The Panel finds that Respondent has likely
disrupted Complainant’s Internet business operations through this diversion of
Internet users, and that Respondent has therefore registered and continues to
use the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Respondent uses Complainant’s WELLS FARGO mark prominently
on this resolving website, so that it might continue the confusion of Internet
users that were unceremoniously routed via the confusingly similar disputed
domain name to Respondent’s commercial website.
Respondent has therefore created a likelihood of confusion as to
Complainant’s source, endorsement, sponsorship or affiliation with the disputed
domain name and corresponding website.
This constitutes evidence of Respondent’s bad faith registration and use
under Policy ¶ 4(b)(iv). See
Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be
For
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 <wellsfargoibk.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 23, 2009
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