national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Chen Pong d/b/a Caoni Mabi

Claim Number: FA0812001239038

 

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, Colorado, USA.  Respondent is Chen Pong d/b/a Caoni Mabi (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2008.

 

On January 7, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 January 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 3, 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@wellsfargo.info, postmaster@wellfargoautofinancing.com, postmaster@wellfargofinancing.com, postmaster@wellfargocom.com, postmaster@wwwwallsfargo.com, postmaster@wellfarego.com, and postmaster@wellsfar4go.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wellsfargo.info> domain name is identical to Complainant’s WELLS FARGO mark.  Respondent’s <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names.

 

3.      Respondent registered and used the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Wells Fargo & Company, is a banking corporation that offers many financial services in banking and investing.  Complainant began in 1852 when the opportunity created by the Gold Rush lead to the opening of a Wells Fargo office to weigh and store gold in San Francisco.  Since then Complainant has established a world-wide place in banking and other financial services.  Complainant’s WELLS FARGO mark has been registered with many governmental trademark authorities including registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 779,187 issued October 27, 1964; Reg. No. 838,059 issued October 31, 1967; Reg. No. 2,575,576 issued June 4, 2002).

 

Respondent, Chen Long d/b/a Caoni Mabi, registered the disputed domain names between February and October of 2008.  The disputed domain names resolve to websites containing links to Complainant’s competitors and logos similar to 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 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.

 

 

Identical and/or Confusingly Similar

 

The Panel finds that registration of Complainant’s mark with the USPTO is sufficient to establish Complainant’s rights in the WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

The <wellsfargo.info> domain name is identical to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).  Respondent has incorporated Complainant’s entire mark into the disputed domain name, notwithstanding the space deletion between WELLS and FARGO.  Deleting said space does not create a difference between the disputed domain name and Complainant’s mark.  Rather, the disputed domain name remains identical to Complainant’s mark.  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).  The addition of the generic top-level domain (“gTLD”) “.info” to Complainant’s mark is irrelevant in determining identicality under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“).

 

 The <wellfargoautofinancing.com>, <wellfargofinancing.com>, and <wellfargocom.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  Respondent’s superficial alterations, elimination of the “s” in WELLS and addition of generic terms, do not differentiate the disputed domain names from Complainant’s mark.  Nor does the addition of the generic top-level domain (“gTLD”) “.com” alleviate potential confusion as the gTLD is a requirement for any Internet address.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”).

 

Respondent’s <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names are also confusingly similar to Complainant’s mark pursuant to Policy
¶ 4(a)(i).  Altering the spelling of WELLS to “walls” and FARGO to “farego,” adding the number “4” in FARGO, or adding “www” does little to differentiate the disputed domain names from Complainant’s mark.  The Panel finds that these disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’  The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).    

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has indeed established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).

 

Respondent has not answered the Complaint; therefore, the Panel chooses to examine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).  The Panel may accept the allegations in the Complaint as true unless clearly contradicted by the evidence.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).

 

The disputed domain names resolve to landing sites that display links to third-party commercial websites, many of which are Complainant’s competitors.  Respondent’s websites are presumed to be pay-per-click websites with Respondent garnering referral fees when Internet users click through the advertised links.  Respondent’s use of the disputed domain names diverts Internet users from Complainant through the use of its own mark leading unsuspecting Internet users to assume an association to Complainant.  The Panel finds that this is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  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 Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

The WHOIS information for Respondent lists the registrant as “Chen Long.”  Without further evidence, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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 Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the disputed domain names disrupts Complainant’s business and intentionally exploits the good reputation of Complainant’s mark.  Use of the disputed domain names in this manner is evidence of bad faith registration and use on the part of Respondent pursuant to Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

The use of the disputed domain names as commercial entities where Respondent is rewarded when Internet users mistakenly click through to Complainant’s competitors demonstrates bad faith registration and use of the disputed domain names by Respondent pursuant to Policy ¶ 4(b)(iv).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 20, 2009

 

 

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