Wells Fargo & Company v. Jerome Deutsch
Claim Number: FA0906001271269
Complainant is Wells
Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is the <wellsfargocorp.com> domain name registered with Crystal Coal, Inc. The other domain names at issue are the <wellsfargocorp.net>, <wellsfargoprotectiveservices.com>, <wellsfargoprotectiveservices.net>, <wellsfargosecuritycorp.com>, and <wellsfargosecuritycorp.net> domain names, registered with Crystal Coal, Inc, Network Solutions, 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.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2009.
On July 1, 2009 and July 18, 2009, Crystal Coal, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargocorp.com> domain name is registered with Crystal Coal, Inc. and that Respondent is the current registrant of the names. Crystal Coal, Inc. has verified that Respondent is bound by the Crystal Coal, 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 July 18, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargosecuritycorp.com>, <wellsfargosecuritycorp.net>, <wellsfargoprotectiveservices.net>, <wellsfargoprotectiveservices.com>, and <wellsfargocorp.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 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@wellsfargocorp.com, postmaster@wellsfargocorp.net, postmaster@wellsfargoprotectiveservices.com, postmaster@wellsfargoprotectiveservices.net, postmaster@wellsfargosecuritycorp.com, and postmaster@wellsfargosecuritycorp.net by e-mail.
On August 20,2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.
A Response was received from the
Respondent in hard copy before the deadline of August 17, 2009. However, the electronic copy was not received
until after the said deadline. The
failure to file a timely electronic copy of the Response means that the
Respondent is not in compliance with Rule 5 of the Policy. However, the Panel may choose whether to
consider the Response. In the
circumstances of this case, the Panel considers that in justice it should
consider the Response, following the approach in J W Spear & Sons
Complainant requests that the domain names be transferred from Respondent to Complainant.
A.
Complainant
The Complainant makes the following assertions:
1. Respondent’s <wellsfargocorp.com>, <wellsfargocorp.net>, <wellsfargoprotectiveservices.com>, <wellsfargoprotectiveservices.net>, <wellsfargosecuritycorp.com>, and <wellsfargosecuritycorp.net> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargocorp.com>, <wellsfargocorp.net>, <wellsfargoprotectiveservices.com>, <wellsfargoprotectiveservices.net>, <wellsfargosecuritycorp.com>, and <wellsfargosecuritycorp.net> domain names.
The Complainant gave no rights to the Respondent. Nor has the Respondent brought himself within any of the limbs of Para 4(c) of the Policy.
3. Respondent registered and used the <wellsfargocorp.com>, <wellsfargocorp.net>, <wellsfargoprotectiveservices.com>, <wellsfargoprotectiveservices.net>, <wellsfargosecuritycorp.com>, and <wellsfargosecuritycorp.net> domain names in bad faith.
The websites accessed by the disputed domain names are all “under construction” except that for <wellsfargocorp.com> which resolves to a website selling domain names.
B.
Respondent
The Respondent stated that he is not
in the financial business of banking, insurance, investments or consumer
finance but is in the security business.
None of the disputed domain names lead anywhere except to a message that
advises the public that the site is under construction: “When we have finished designing our website, these domain names will be
directed to a dignified and professional website concerning contract security
and in no way make reference to anything but our security services”.
The Respondent said that he felt: “Compelled to immediately convey the domain
name <wellsfargocorp.com> to the Complainant since perhaps that domain is
so close to that of the Complainant’s and makes no reference to security”. He was prepared to convey all of the
other disputed domain names, with the exception of <wellsfargoprotectiveservices.com>, which he wishes to keep.
(a) all the disputed domain names are confusingly similar to the trade marks in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in any of the disputed domain names;
(c) the Respondent has registered and is using the disputed domain names in bad faith.
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 challenge the contentions of the Complainant in his Response, the Panel decides 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.
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.
In many cases under the Policy,
where a respondent has consented to a transfer of a disputed domain name, a
Panelist has found it unnecessary to go through the exercise of assessing the
case in terms of
The Complainant is a diversified financial services company
with $422 billion in assets, 146,000 employees and provides banking, insurance,
investment, mortgage and consumer finance for more than 37,000,000 customers
over 6,000 locations. It is also the
issuer of 6,000,000 credit card accounts and was an originator of home
mortgages in the
The Complainant owns and has owned for many years numerous
trade mark registrations for the mark WELLS FARGO and variants, both in the
It is well-known that the addition of generic terms fails adequately to distinguish a disputed domain name from a complainant’s mark. The only disputed domain name in issue is <wellsfargoprotectiveservices.com>. However, in this name, the words “protective services” are merely generic add-ons to the Complainant’s trade mark.
In the view of the Panel, all the disputed domain names are confusingly similar to the Complainant’s trade marks. All the additional words can be associated with aspects of the Complainant’s business of providing banking and financial services.
The Respondent has not alleged any rights or legitimate interests in the disputed domain names and has been given no right to use the Complainant’s trade mark. None of the exceptions in Paragraph 4(c) of the Policy has been shown to apply to the Respondent. The disputed domain name <wellsfargocorp.com> redirects to a site which offers domain names for sale. The remaining domain names all display an “under construction” message on the website.
The Complainant’s registered trade mark and brand are
well-known throughout the
It defies belief that a respondent resident in the
The inference that the Respondent was endeavoring to capitalize on the goodwill and reputation of the Complainant in using its mark in domains is irresistible. This is a clear case of cybersquatting.
The holding of domain names featuring the Complainant’s mark
as well as the use of one of the sites to divert users to a site for selling
domain names are indicia of bad
faith. The words of the Panelist in Sony Kabushiki
Kaisha v. Inga Kil (WIPO Dec. 9, 2000) are appropriate here: “It is
inconceivable that the Respondent would make any active use of the disputed
domain names without creating a false impression of association with the
Complainant. These domain names are so
obviously connected with the Complainant and its services that its very use by
someone else such as the Respondent suggests opportunistic bad faith.”
The Respondent registered and is using the disputed domain names in bad faith and there is no doubt that the Complainant has made out its case under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargocorp.com>, <wellsfargocorp.net>, <wellsfargoprotectiveservices.com>, <wellsfargoprotectiveservices.net>, <wellsfargosecuritycorp.com>, and <wellsfargosecuritycorp.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker Panelist
Dated: September 4, 2009
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